Johns Manville Corp. v. Knauf Insulation, Inc.

Trials@uspto.gov 	Paper: 9
571-272-7822 	Entered: October 16, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
Petitioner,
v.
KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
Patent Owner.
____________
Case IPR2018-00827
Patent 9,828,287 B2
____________
Before JAMES T. MOORE, KRISTINA M. KALAN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
KALAN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

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Johns Manville Corporation and Johns Manville, Inc. (“Petitioner”)
filed a Petition (Paper 1, “Pet.”) seeking inter partes review of claims 1–9
and 16–17 of U.S. Patent No. 9,828,287 B2 (Ex. 1001, “the ’287 patent”).
Knauf Insulation, Inc. and Knauf Insulation SPRL (“Patent Owner”) filed a
Preliminary Response. Paper 8 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). An inter partes review may
not be instituted “unless . . . there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a). Applying this standard to the information
presented in the Petition, the Preliminary Response, and the supporting
evidence, we determine Petitioner has not established a reasonable
likelihood that it would prevail with respect to at least one of the claims
challenged in the Petition. Therefore, institution of an inter partes review is
denied.
I. 	BACKGROUND
A. Related Matters
The parties identify the following civil action as involving
the ’287 patent: Knauf Insulation, Inc. v. Johns Manville Corp., No. 1:15-
cv-00111-WTL-MJD (S.D. Ind. 2015). Pet. 1; Paper 4, 1. Petitioner asserts
that the ’287 patent contains overlapping subject matter with a number of
other patents that are the subject of proceedings before the Office. Pet. 1–2.

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B. Petitioner’s Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 16,
36, 46, 60):
References 	Basis 	Claims Challenged
Srinivasan1 and Worthington2 § 103(a) 	1–9 and 16–17
Srinivasan and Gogek3 § 103(a) 	1, 4–8, and 16–17
Helbing,4 Worthington, and
Srinivasan
§ 103(a) 	1–9 and 16–17
Helbing, Gogek, and
Srinivasan
§ 103(a) 	1, 4–8, and 16–17
Petitioner supports its challenges with a Declaration of Dr. Frederick
J. Hirsekorn. Ex. 1005.
C. The ’287 Patent (Ex. 1001)
The ’287 patent, titled “Binders and Materials Made Therewith,”
relates to binders to produce or promote cohesion in non-assembled or
loosely assembled matter. Ex. 1001, at [54], [57]. The binders of the ’287
patent may be used in a variety of fabrication applications, and may be
formaldehyde free. Id. at 1:62–65, 2:6–7. Generally, the binders may
contain ester and/or polyester compounds, sodium or potassium salts of
inorganic acids, and may include the product of a Maillard reaction, which
1 U.S. Patent App. Pub. No. 2005/0059770 A1, published March 17, 2005
(Ex. 1003, “Srinivasan”).
2 U.S. Patent No. 3,513,001, issued May 19, 1970 (Ex. 1004,
“Worthington”).
3 U.S. Patent No. 2,965,504, issued December 20, 1960 (Ex. 1009,
“Gogek”).
4 U.S. Patent App. Pub. No. 2005/0202224 A1, published Sept. 15, 2005
(Ex. 1008, “Helbing”).

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reactants may include an amine reactant reacted with a reducing-sugar
carbohydrate reactant. Id. at 2:12–46.
The ’287 patent provides numerous examples of binders and the
procedure for preparing those binders. Id. at 55:52–73:23. The claims of
the ’287 patent are directed to a thermal or acoustical fiberglass insulation
material comprising a collection of glass fibers and a binder with various
characteristics. Id. at 88:28–90:22.
D. Illustrative Claim
The ’287 patent includes 17 claims; claims 1, 8, and 9 are the only
independent claims. Claim 1 is illustrative of the challenged claims and is
reproduced below, with additional numbering as added by Petitioner:
1. [1.1] A thermal or acoustical fiberglass insulation material
comprising:
(a) [1.2] a collection of glass fibers; and
(b) [1.3] a binder disposed on the collection of glass fibers,
wherein the binder comprises [1.4] i) at least one reaction
product of a reducing sugar reactant and an amine reactant,
[1.5] wherein the percent by dry weight of the reducing sugar
reactant with respect to the total weight of reactants ranges
from about 73% to about 96%, [1.6] ii) a silicon-containing
coupling agent, and [1.7] iii) optionally, a corrosion inhibitor,
[1.8] wherein the fiberglass material comprises less than 99%
by weight and more than 75% by weight glass fibers, [1.9]
and wherein the fiberglass material has a density of from
about 0.4 lbs/ft 3 to about 6 lbs/ft3 .
Ex. 1001, 88:28–43.
II. 	DISCUSSION
A. 	Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed

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Tech., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (upholding application
of the broadest reasonable interpretation standard in an inter partes review).
Under that standard, we generally give claim terms their ordinary and
customary meaning as would be understood by a person of ordinary skill in
the art in the context of the entire patent disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes express constructions for two claim terms—
“amine reactant” and “the binder contains about 4 percent to about 5 percent
nitrogen by mass as determined by elemental analysis.” Pet. 8–13. After
considering the parties’ arguments and the evidence before us, we determine
it is not necessary to construe any claim term expressly to determine whether
to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”).
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art
(“POSITA”) “would have been someone with a Ph.D. in Chemistry and 3–5
years of industry experience in binder development for insulating or
analogous products, or someone with a Bachelor of Science degree in
Chemistry or Chemical Engineering and 10 or more years of experience in
binder development for the manufacture of insulating or analogous
products.” Pet. 10 (citing Ex. 1005 ¶ 38) (emphasis added). Patent Owner
does not dispute Petitioner’s contention regarding the level of skill in the art.
We determine that “analogous products,” as set forth in Petitioner’s
definition of a POSITA, is unclear and overly broad. Petitioner does not
explain what it means by “analogous products,” and the phrase “insulating

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or analogous products” is broader than the field of art to which the claimed
method pertains. Id. Dr. Hirsekorn explains that the challenged claims of
the ’287 patent “are directed to thermal or acoustical fiberglass insulation
materials made by disposing a binder on a collection of glass fibers.”
Ex. 1005 ¶ 39. That testimony is consistent with the preamble of claim 1 of
the ’287 patent, which recites: “[a] thermal or acoustical fiberglass
insulation material.” Ex. 1001, 88:28.
Accordingly, on this record and consistent with the expert testimony
and the language of the ’287 patent, we determine that a POSITA would
have had a Ph.D. in Chemistry and three to five years of industry experience
in binder development for the manufacture of fiberglass insulation products,
or a Bachelor’s degree in Chemistry or Chemical Engineering and ten or
more years of experience in binder development for the manufacture of
fiberglass insulation products. Ex. 1005 ¶¶ 38–39.
C. Overview of Prior Art References
1. 	Srinvasan (Ex. 1003)
Srinivasan generally discloses “[a]n aqueous binder composition” and
“the related method of its use for making glass fiber products, especially
fiberglass insulation.” Ex. 1003, at [57]. Srinivasan describes its
composition as “a new formaldehyde-free binder composition.” Id. ¶ 1. The
composition particularly relates to “a water-soluble and substantially
infinitely water-dilutable thermosetting (i.e., thermosettable) adduct (or
copolymer) of an unsaturated carboxylic acid monomer (i.e., at least on[e]
such monomer) and an unsaturated hydroxyl monomer (i.e., at least one such
monomer).” Id. ¶ 21. Srinivasan includes silanes as coupling agents. Id.
¶ 55. It discusses products in which 99–60% by weight will be composed of

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glass fibers, and products having a density in the range of less than one
pound per cubic foot to forty pounds per cubic foot. Id. ¶ 65.
2. 	Worthington (Ex. 1004)
Worthington discloses thermosetting compositions for use as binders
in the making of shell molds or cores and for other purposes for which
thermosetting compositions are used, for example, for the production of
plastic articles in conjunction with a suitable filler. Ex. 1004, 1:29–35.
Worthington’s objective is to provide a substitute for phenolic resins and
other binders conventionally used in the shell mold process. Id. at 1:41–52.
According to Worthington, the thermosetting composition comprises:
a major proportion by weight of a carbohydrate (preferably the
carbohydrate is mixed with a minor proportion of either a mineral
acid or a salt liberating such an acid on heating, such as, for
example, the ammonium salt of sulphuric or hydrochloric acid),
a 	minor 	proportion 	of 	a 	carboxylic 	acid, 	preferably 	a
polycarboxylic acid, preferably containing additional groups
such as hydroxyl or amino groups or an aromatic carboxylic acid
with active α carbon atoms, or a mixture of two or more such
acids and a still smaller proportion of one or more cross-linking
agents and of one or more amines.
Id. at 1:53–65.
Worthington discloses that the ingredients react to form a
thermosetting resin-like product that can be used to replace phenol
formaldehyde synthetic resins or other materials commonly used in the
production of molded products or of shell molds or cores. Id. at 3:55–58.
Worthington identifies advantages of the disclosed binders over phenol-
formaldehyde resins and other materials previously used in the art. Id.
at 7:11–23.

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3. 	Helbing (Ex. 1008)
Helbing discloses “formaldehyde-free, thermally-curable, alkaline,
aqueous binder compositions.” Ex. 1008, at [57]. In particular, Helbing’s
disclosure relates to “thermally-curable, polyester binders for non-woven
fibers.” Id. ¶ 2. Helbing discloses, inter alia, a glass fiber product (id. ¶ 10),
a binder composition including a polyacid component having acid groups
and a polyhydroxy component having hydroxyl groups (id. ¶¶ 8, 11, 17), use
of catalysts capable of increasing the rate of polyester formation that may
include an ammonium salt (id. ¶ 20), and use of silicon-containing coupling
agents (id. ¶ 21).
4. 	Gogek (Ex. 1009)
Gogek relates to moisture resistant refractory blocks having high
hardness suitable for use in insulating furnaces. Ex. 1009, 1:14–16. Gogek
discloses:
I have discovered that greatly improved insulating blocks which
are highly moisture resistant can be prepared from refractory
materials and a binder consisting essentially of a sugar and a
chemical adjunct, and I have also discovered that such blocks
possess hardness and resistance to breakage and chipping not
found in any commercially available refractory block.
Id. at 1:30–36. Gogek discloses that the preferred chemical adjunct is
ammonium sulfate. Id. at 1:73.
Gogek discloses the following example formulation:

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Ex. 1009, 2:10–18 (Example 1). Gogek discloses that, to make an insulating
block, “the above-named components were slurried in 600 to 1000 parts of
water, and the slurry was passed between two moving perforated belts to
squeeze out the excess water and compact the undissolved ingredients.” Id.
at 2:19–23. The compressed mass was cut into blocks, which were then
baked in kilns. Id. at 2:23–26. According to Gogek, blocks made according
to this method were resistant to water and exhibited high surface hardness,
as compared with blocks made by prior art methods. Id. at 2:30–41.
D. Petitioner’s Ground 1: Srinivasan and Worthington
Petitioner contends that Srinivasan and Worthington teach the thermal
or acoustical fiberglass insulation material limitations of independent
claim 1, i.e., that Srinivasan discloses limitations 1.1, 1.2, 1.3, 1.6, 1.8, and
1.9, and that Worthington teaches limitations 1.4 and 1.5 (optional
limitation 1.7, Petitioner argues, need not be met). Pet. 19–24. Petitioner
relies on Srinivasan and/or Worthington to teach the additional limitations of
claims 2–9 and 16–17. Id. at 24–35. Petitioner contends that a skilled
artisan would have had several reasons to combine the teachings of
Srinivasan and Worthington. Id. at 17–19 (“Overarching Reasons to
Combine Srinivasan and Worthington”) (citing Ex. 1005 ¶¶ 67–69).
Patent Owner argues that Petitioner fails to adequately explain its
theory of obviousness, and picks and chooses binder components without
explanation. Prelim. Resp. 12–20. Patent Owner also argues that Petitioner
fails to provide a valid rationale for combining the cited references. Id.
at 20–27. More particularly, Patent Owner argues that being in the same
field of endeavor or analogous does not establish obviousness; that using
thermoset material is too broad to explain obviousness; that Petitioner fails

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to support its assertion that elements of the cited references could have been
predictably combined; and that Petitioner improperly bases its obviousness
grounds on the disclosure of the ’287 patent and the reexamination of
the ’445 patent. Id. at 21–27. Patent Owner also argues that compatibility
does not mean obvious to combine (id. at 29) and that a need for
formaldehyde-free binders is not a reason to modify Srinivasan or Helbing
(id. at 31).
First, Petitioner argues that both Srinivasan and Worthington
“disclose a thermosetting binder composition, and both do so with a binder
containing a reducing sugar and a monomeric carboxylic acid, making the
reactants in the similar endeavors related to each other.” Pet. 17 (citing
Ex. 1005 ¶ 67). In the same vein, Petitioner argues that the Board “found
Worthington to be analogous prior art” to Patent Owner’s related binder
patent, and that therefore, Worthington is analogous art. Id. at 18.
Petitioner’s argument is deficient in several respects. Analogous art is
merely a threshold inquiry as to whether a reference can be considered in an
obviousness analysis. Demonstrating that a reference is analogous art or
relevant to the field of endeavor of the challenged patent is not sufficient to
establish that one of ordinary skill would have had reason to combine its
teachings with other prior art in the manner set forth in the claim. See
Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed.
Cir. 2017) (“a broad characterization of [prior art references] as both falling
within the same alleged field . . . without more, is not enough for [Petitioner]
to meet its burden of presenting a sufficient rationale to support an
obviousness conclusion”). Mere compatibility of the references is likewise
not sufficient. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993

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(Fed. Cir. 2017) (it is not enough to show that “a skilled artisan, once
presented with the two references, would have understood that they could be
combined”).
Second, Petitioner argues that, because Srinivasan “teaches methods
lending themselves to the use of thermosetting compositions,” and because
Worthington “expressly teaches that its methods are appropriate wherever a
thermosetting composition may be used,” that a “combination of
Worthington and Srinivasan is obvious in the context of thermosetting
compositions.” Pet. 17–18 (citing Ex. 1005 ¶ 68). Petitioner argues that, “as
shown below,” the challenged claims “represent nothing more than the
predictable use of prior art elements from Srinivasan and/or Worthington
according to their established functions.” Id. In its claim-by-claim analysis,
Petitioner asserts that one of ordinary skill “would have recognized the
benefits of Worthington’s thermosetting composition” and “found it obvious
to use that composition in the method disclosed by Srinivasan such that
flexibility in physical conditions might be increased, the product might last
longer in storage, noxious fumes might not be produced, and materials for
production might be secured more cheaply.” Id. at 21 (citing Ex. 1005 ¶ 75).
Petitioner’s argument assumes that all thermoset binders are useful in
a fiberglass insulation product of the type disclosed in Srinivasan—an
assumption that Petitioner fails to support. Petitioner does not compare the
thermoset binder disclosed in Worthington with the thermoset binder
disclosed in Srinivasan, nor does Petitioner attempt to show that one of
ordinary skill in the art would have had a reason to substitute Worthington’s
binder for the binder disclosed in Srinivasan. See Pet. 21; Ex. 1005 ¶ 75.

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As noted by Patent Owner, “the cited references teach considerably different
binding systems.” Prelim. Resp. 19. Srinivasan teaches “a free radical
polymerized adduct of a monomeric carboxylic acid component and a
monomeric hydroxyl component, polymerized in the presence of a chain
transfer agent,” for use in “making glass fiber products, especially fiberglass
insulation.” Id.; Ex. 1009, at [57]. On the other hand, Worthington
discloses thermosetting compositions for use as binders in the making of
shell molds or cores and, for example, for the production of plastic articles in
conjunction with a suitable filler, with the objective of providing a substitute
for phenolic resins and other binders conventionally used in the shell mold
process. Ex. 1004, 1:29–35, 1:41–52.
Moreover, Petitioner does not support, in its claim-by-claim analysis,
which elements of the cited references could be predictably combined. For
example, in its discussion of claim 1, Petitioner indicates which of the
references purportedly discloses each element of claim 1, but does not
indicate which of the prior art elements allegedly has a known function,
what that function is, and why that function is allegedly predictable.
Pet. 19–24; Prelim. Resp. 26. Petitioner and its declarant have not
explained sufficiently why one of ordinary skill in the art would have
selected Worthington’s thermosetting composition for use as a binder in a
fiberglass insulation material. Petitioner’s reliance on the testimony of
Dr. Hirsekorn to support its arguments fails to direct us to evidence
supporting that claims 1–9 and 16–17 represent nothing more than the
predictable use of prior art elements. Accordingly, we give little weight to
Dr. Hirsekorn’s testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that
does not disclose the underlying facts or data on which the opinion is based

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is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127
F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence
or Federal Circuit jurisprudence requires the fact finder to credit
unsupported assertions of an expert witness).
Third, Petitioner argues that “combining the teachings of the two
references would have been well within the skill” of an ordinarily skilled
artisan, who would have had a “reasonable expectation of success in
fabricating materials based on the teachings of Srinivasan in view of
Worthington.” Pet. 18 (citing Ex. 1005 ¶ 69). Obviousness, however,
requires “a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Moreover,
it is Petitioner’s burden to demonstrate “that a skilled artisan would have
been motivated to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367–1368 (Fed. Cir. 2016)
(citations omitted). In this light, the extent of the modifications proposed by
Petitioner, the reasons for such modifications, and whether there would be a
reasonable expectation of success are not adequately supported. Petitioner
merely makes the assertion that it would have been so, and cites to a largely
duplicative paragraph of the Hirsekorn Declaration for support. Pet. 18
(citing Ex. 1005 ¶ 69). An unsupported statement that combining the
teachings of the two references would have been “well within the skill of a
POSA,” because the results of reacting a reducing sugar with an amine

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reactant “were well-known and predictable” does not meet Petitioner’s
burden. Id.
Finally, Petitioner mentions briefly that the claims of the ’445 patent
subject to reexamination were found unpatentable, and that the ’287 patent
overcame an obviousness-type double patenting rejection over the ’445
patent claims by terminal disclaimer, and thus “it follows that the ’287
Patent claims are similarly unpatentable.” Pet. 19 (citing Section III.C).
This alone, without any analysis of the similarities and differences between
the claims of those patents, does not permit us to reach the conclusion that
“it follows” that the ’287 patent claims are unpatentable. See Prelim.
Resp. 27–28.
Although Petitioner attempts to establish reasons to combine the
elements of Worthington and Srinivasan (Pet. 17–19), Petitioner does not
expressly discuss whether one of ordinary skill in the art would have had a
reason to combine the cited teachings in the context of a fiberglass insulation
product. The cited paragraphs of the Hirsekorn Declaration (Ex. 1005
¶¶ 67–69, 74–75) are substantially the same as the Petition (Pet. 17–19, 21)
and are deficient for the same reasons as discussed above. Accordingly, we
determine that Petitioner’s arguments and evidence, whether considered
individually or as a whole, do not demonstrate a reasonable likelihood of
prevailing on Petitioner’s contention that the challenged claims are
unpatentable as obvious in view of Srinivasan and Worthington.
E. Petitioner’s Grounds 2, 3, and 4
We address Petitioner’s remaining three Grounds together, because
Petitioner raises substantially similar arguments for all three Grounds, and
because our discussion of these three Grounds addresses similar issues.

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For Ground 2, Petitioner contends that Srinivasan and Gogek teach
the limitations of independent claim 1, i.e., that Srinivasan teaches
limitations 1.1, 1.2, 1.3, 1.6, 1.8, and 1.9, and that Gogek teaches limitations
1.4 and 1.5 (optional limitation 1.7, Petitioner argues, carries no patentable
weight). Pet. 38–40. Petitioner relies on Srinivasan and/or Gogek to teach
the additional limitations of claims 4–8 and 16–17. Id. at 41–45. Petitioner
contends that a skilled artisan would have had several reasons to combine
the teachings of Srinivasan and Gogek. Id. at 36–38 (“Overarching Reasons
to Combine Srinivasan and Gogek”) (citing Ex. 1005 ¶¶ 133–135).
For Ground 3, Petitioner contends that Helbing, Worthington and
Srinivasan teach the limitations of independent claim 1, i.e., that Helbing
teaches limitations 1.1, 1.2, 1.3, and 1.6, that Worthington teaches
limitations 1.4 and 1.5, and that Srinivasan teaches limitations 1.8 and 1.9
(optional limitation 1.7, Petitioner argues, carries no patentable weight).
Pet. 50–52. Petitioner relies on Helbing, Worthington, and/or Srinivasan to
teach the additional limitations of claims 2–9 and 16–17. Id. at 52–60.
Petitioner contends that a skilled artisan would have had several reasons to
combine the teachings of Helbing with Srinivasan and Worthington. Id.
at 47–50 (“Overarching Reasons to Combine Helbing with Srinivasan and
Worthington”) (citing Ex. 1005 ¶¶ 180–183).
For Ground 4, Petitioner contends that Helbing, Gogek and Srinivasan
teach the limitations of independent claim 1, i.e., that Helbing teaches
limitations 1.1, 1.2, 1.3, and 1.6, that Gogek teaches limitations 1.4 and 1.5,
and that Srinivasan teaches limitations 1.8 and 1.9 (optional limitation 1.7,
Petitioner argues, carries no patentable weight). Pet. 62–64. Petitioner
relies on Helbing, Gogek, and/or Srinivasan to teach the additional

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limitations of claims 4–8 and 16–17. Id. at 64–69. Petitioner contends that a
skilled artisan would have had several reasons to combine the teachings of
Helbing with Gogek and Worthington. Id. at 60–62 (“Overarching Reasons
to Combine Helbing with Gogek and Worthington”) (citing Ex. 1005
¶¶ 256–258).
Patent Owner argues that, for each of the remaining three Grounds,
Petitioner fails to adequately explain its theory of obviousness, and picks
and chooses binder components without explanation. Prelim. Resp. 12–20.
Patent Owner also argues that Petitioner fails to provide a valid rationale for
combining the cited references. Id. at 20–27. More particularly, Patent
Owner argues that being in the same field of endeavor or analogous does not
establish obviousness; that using thermoset material is too broad to explain
obviousness; that Petitioner fails to support its assertion that elements of the
cited references could have been predictably combined; and that Petitioner
improperly bases its obviousness grounds on the disclosure of the ’287
patent and the reexamination of the ’445 patent. Id. at 21–27. Patent Owner
also argues that compatibility does not mean obvious to combine (id. at 29)
and that a need for formaldhyde-free binders is not a reason to modify
Srinivasan or Helbing (id. at 31).
First, for each Ground, Petitioner argues that each reference “is
analogous prior art to the claimed subject matter” (Pet. 37, 48, 62). More
particularly, Petitioner argues that Srinivasan and Gogek are both “directed
to the manufacture of articles by thermosetting a binder composition mixed
with loose matter,” (id. at 36), and that Helbing “is directed to the
manufacture of articles by thermosetting a binder composition mixed with
loose matter,” (id. at 47, 60). As discussed above, Petitioner’s argument is

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deficient in several respects. Analogous art is merely a threshold inquiry as
to whether a reference can be considered in an obviousness analysis.
Demonstrating that a reference is analogous art or relevant to the field of
endeavor of the challenged patent is not sufficient to establish that one of
ordinary skill would have had reason to combine its teachings with other
prior art in the manner set forth in the claim. See Securus Techs., Inc., 701
F. App’x at 977. Mere compatibility of the references is likewise not
sufficient. Personal Web Techs., 848 F.3d at 994.
Second, for Ground 2, Petitioner argues that Srinivasan “teaches
methods lending themselves to the use of thermosetting compositions,” and
that Gogek “discloses just such a composition.” Pet. 37 (citing Ex. 1005
¶ 134). For Ground 3, Petitioner argues that Helbing teaches that its
methods “lend themselves to the use of thermosetting compositions” and
Worthington suggests that its teachings “are appropriate wherever a
thermosetting composition may be used.” Id. at 48 (citing Ex. 1005 ¶ 181).
For Ground 4, Petitioner also argues that Helbing and Srinivasan teach that
their methods “lend themselves to the use of thermosetting compositions”
and Gogek “discloses just such a composition.” Id. at 61 (citing Ex. 1005
¶ 257). Petitioner argues that, as shown or described below, the challenged
claims “represent nothing more than the predictable use of prior art elements
from [the references] according to their established functions.” Id. at 36, 47,
61. In its claim-by-claim analysis for Grounds 2 and 4, Petitioner asserts
that it would have been obvious to one of ordinary skill in the art to seek
various binder formulations that avoid formaldehyde emissions, such as
Gogek’s binder, and use them in combination with Srinivasan’s or Helbing’s
methods. Id. at 39 (citing Ex. 1005 ¶ 140), 63 (citing Ex. 1005 ¶ 264). In its

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claim-by-claim analysis for Ground 3, Petitioner asserts that one of ordinary
skill “would have recognized the benefits of Worthington’s thermosetting
composition” and “found it obvious to use that composition in the method
disclosed by Helbing for the reasons stated above.” Id. at 51 (citing
Ex. 1005 ¶ 189).
Petitioner’s argument assumes that all thermoset binders are useful in
a fiberglass insulation product of the type disclosed in the respective primary
reference (Srinivasan or Helbing)—an assumption that Petitioner fails to
support. Petitioner does not compare the binder disclosed in any of the
secondary references with the binder disclosed in the respective primary
reference, nor does Petitioner attempt to show that one of ordinary skill in
the art would have had a reason to substitute the binder of the secondary
reference for the binder disclosed in the respective primary reference. See
Pet. 39 (citing Ex. 1005 ¶ 140), 51 (citing Ex. 1005 ¶ 189), 63 (citing
Ex. 1005 ¶ 264). As noted by Patent Owner, the cited references “teach
considerably different binding systems.” Prelim. Resp. 19. Srinivasan
teaches “a free radical polymerized adduct of a monomeric carboxylic acid
component and a monomeric hydroxyl component, polymerized in the
presence of a chain transfer agent,” for use in “making glass fiber products,
especially fiberglass insulation.” Id.; Ex. 1009, at [57]. Helbing teaches
“formaldehyde-free, thermally-curable, alkaline, aqueous binder
compositions” relating to “thermally-curable, polyester binders for non-
woven fibers.” Ex. 1008, at [57], ¶ 2. On the other hand, Worthington
discloses thermosetting compositions for use as binders in the making of
shell molds or cores and, for example, for the production of plastic articles in
conjunction with a suitable filler, with the objective of providing a substitute

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Patent 9,828,287 B2
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for phenolic resins and other binders conventionally used in the shell mold
process. Ex. 1004, 1:29–35, 1:41–52. Gogek discloses a binder that uses
clay, for use in “moisture resistant refractory blocks having high hardness
suitable for use in insulating furnaces.” Ex. 1009, 1:14–16.
Moreover, Petitioner does not support, in its claim-by-claim analysis,
which elements of the cited references could be predictably combined. For
example, in its discussion of claim 1, Petitioner indicates which of the
references purportedly discloses each element of claim 1, but does not
indicate which of the prior art elements allegedly has a known function,
what that function is, and why that function is allegedly predictable.
Pet. 38–40 (Ground 2), 50–52 (Ground 3), 62–64 (Ground 4); Prelim.
Resp. 26. Petitioner and its declarant have not explained sufficiently why
one of ordinary skill in the art would have selected the composition of the
secondary reference in question for use as a binder in a fiberglass insulation
material of Srinivasan or Helbing. Petitioner’s reliance on the testimony of
Dr. Hirsekorn to support its arguments fails to direct us to evidence
supporting that the challenged claims represent nothing more than the
predictable use of prior art elements. See Ex. 1005 ¶¶ 133–135, 180–183,
256–258. Accordingly, we give little weight to Dr. Hirsekorn’s testimony.
See 37 C.F.R. § 42.65(a); Rohm & Haas Co. 127 F.3d at 1092.
Third, Petitioner argues that “combining the teachings of the []
references would have been well within the skill” of an ordinarily skilled
artisan, who would have had a “reasonable expectation of success in
fabricating materials based on the teachings of” the respective references.
Pet. 37 (citing Ex. 1005 ¶ 135), 48 (citing Ex. 1005 ¶ 182), 61 (citing
Ex. 1005 ¶ 258). Obviousness requires “a reason that would have prompted

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Patent 9,828,287 B2
20
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR Int’l Co. 550 U.S. at 418.
It is Petitioner’s burden to demonstrate “that a skilled artisan would
have been motivated to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. 821
F.3d at 1367. In this light, the extent of the modifications proposed by
Petitioner, the reasons for such modifications, and whether there would be a
reasonable expectation of success are not adequately supported. Petitioner
merely makes the assertion that it would have been so, and cites to a largely
duplicative paragraph of the Hirsekorn Declaration for support. Pet. 37
(citing Ex. 1005 ¶ 135), 48 (citing Ex. 1005 ¶ 182), 61 (citing Ex. 1005
¶ 258). An unsupported statement that combining the teachings of the two
references would have been “well within the skill of a POSA,” because the
results of reacting a reducing sugar with an amine reactant “were well-
known and predictable” does not meet Petitioner’s burden. Id.
Finally, regarding Ground 3, Petitioner mentions briefly that the
claims of the ’445 patent subject to reexamination were found unpatentable,
and that “[v]irtually all of the subject matter of the challenged claims of the
’287 Patent was present in the claims of the’445 Patent.” Id. at 49.
Petitioner further argues that the claims of the ’445 Patent are “actually
narrower than the challenged claims of the ’287 Patent.” This alone, without
any analysis of the similarities and differences between the claims of those
patents, does not permit us to reach the conclusion that the ’287 patent
claims are unpatentable. See also Prelim. Resp. 27–28.

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Patent 9,828,287 B2
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Although Petitioner attempts to establish reasons to combine the
elements of the respective references relied upon (Pet. 36–39, 47–51, 60–
63), Petitioner does not expressly discuss whether one of ordinary skill in the
art would have had a reason to combine the cited teachings in the context of
a fiberglass insulation product. The cited paragraphs of the Hirsekorn
Declaration (Ex. 1005 ¶¶ 133–135, 140, 180–183, 189, 256–258, 264) are
substantially the same as the corresponding portions of the Petition (Pet. 36–
39, 47–51, 60–63) and are deficient for the same reasons as discussed above.
Accordingly, we determine that Petitioner’s arguments and evidence,
whether considered individually or as a whole, do not demonstrate a
reasonable likelihood of prevailing on Petitioner’s contention that the
challenged claims are unpatentable as obvious in view of the prior art cited
in Grounds 2, 3, and 4.
III. 	CONCLUSION
After considering the information presented in the Petition and the
Preliminary Response, and the evidence of record, we determine that
Petitioner has not demonstrated a reasonable likelihood of prevailing with
respect to any of the challenged claims of the ’287 patent.
IV. 	ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.

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Patent 9,828,287 B2
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PETITIONER:
Kristopher L. Reed
Edward Mayle
KILPATRICK TOWNSEND & STOCKTON LLP
kreed@kilpatricktownsend.com
tmayle@kilpatricktownsend.com
PATENT OWNER:
Joshua P. Larsen
James R. Sweeney II
BARNES & THORNBURG LLP
joshua.larsen@btlaw.com
jsweeney@btlaw.com
Daniel J. Lueders
Woodard Emhardt Moriarty McNett & Henry LLC
dlueders@uspatent.com