UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.
Petitioners
v.
KNAUF INSULATION, LLC and KNAUF INSULATION SPRL.
Patent Owners
Patent No. D631,670
Filing Date: December 31, 2008
Issue Date: February 1, 2011
Title: INSULATION MATERIAL
________________
Inter Partes Review No. Unassigned

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D631,670

UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.100 ET SEQ.

TABLE OF CONTENTS
I.

INTRODUCTION ...........................................................................................1

II.
III.

MANDATORY NOTICES UNDER 37 C.F.R. 42.8 ................................... 1

PAYMENT OF FEES UNDER 37 C.F.R. 42.15(A) AND 42.103............ 2

IV.

GROUNDS FOR STANDING ........................................................................ 3

V.

IDENTIFICATION OF CHALLENGE .......................................................... 3

VI.

OVERVIEW OF U.S. PATENT NO. D631,670 ............................................ 4

VII. CLAIM CONSTRUCTION ............................................................................ 5

A.
B.

Legal Standard for Claim Construction of a Design Patent .................. 5

Claim Construction of the 670 Patent .................................................. 8
1.

The Prosecution History of the 670 Patent ................................ 9

2.

Analysis of the Potential Claim Elements ................................18

VIII. THE APPLICABLE LEGAL STANDARDS ...............................................22

IX.

A.
B.

Obviousness.........................................................................................22
Anticipation .........................................................................................23

C.

Inherency .............................................................................................24

D.

One of Ordinary Skill ..........................................................................25

DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY

UNDER THE BROADEST REASONABLE CONSTRUCTION ............... 26
A.

Ground 1: The Claim Would Have Been Rendered Obvious Under

103 by the Johns Manville Thermal and Acoustical Equipment
Insulations for OEM Applications Brochure (Ex. 1004) in View of
Either Soundproofing Your Walls, The Family Handyman Magazine
(Ex. 1008) or Owens Corning 2006 at a Glance Report (Ex. 1010) 26
1.
Elements 1-3 .............................................................................28
2.

Alleged Element 4.....................................................................29

3.

Element 5 ..................................................................................32

4.

Even If Brown and Cream Constitute a Claim Element, the

Claim of the 670 Patent Would Have Been Rendered Obvious
Under 103 ...............................................................................40

5.

JM 1997 Brochure Conclusion .................................................43

i

B.

C.

Ground 2: The Claim Would Have Been Rendered Obvious Under

103 by the Johns Manville the Worldwide Leader in Thermal and
Acoustical Equipment Insulations for OEM Applications Brochure
(Ex. 1005) in View of Either Soundproofing Your Walls, The Family
Handyman Magazine (Ex. 1008) or Owens Corning 2006 at a
Glance Report (Ex. 1010)....................................................................44
1.
2.

Elements 1-3 .............................................................................46

Alleged Element 4.....................................................................46

3.

Element 5 ..................................................................................47

4.

Even If Brown and Cream Constitute a Claim Element, the

Claim Would Have Been Rendered Obvious Under 103 ...... 49

5.

JM 2000 Brochure Conclusion .................................................50

Ground 3: Based Upon the Patent Owners Claim Construction, the

Claim of the 670 Patent Is Unpatentable Under 102 In View of
Johns Manville Thermal and Acoustical Equipment Insulations for
OEM Applications Brochure (Ex. 1004) ............................................51

D.

X.

Ground 4: Based Upon the Patent Owners Claim Construction, the

Claim of the 670 Patent Is Unpatentable Under 102 In View of
Johns Manville The Worldwide Leader in Thermal and Acoustical
Equipment Insulations for OEM Applications Brochure (Ex. 1005) . 52
CONCLUSION..............................................................................................53

ii

TABLE OF AUTHORITIES
Pages
Cases
Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.,
467 F.3d 1370 (Fed. Cir. 2006) ............................................................................6
Apple, Inc. v. Samsung Elecs. Co.,
678 F.3d 1314 (Fed. Cir. 2012) ..........................................................................23
Apple, Inc. v. Samsung Electronics Co.,
No. 11-CV-01846-LHK, 2012 WL 3071477 (N.D. Cal. July 27,
2012) .....................................................................................................................7
Blisscraft of Hollywood v. United Plastic Co.,
189 F. Supp. 333 (S.D.N.Y. 1960) .....................................................................21
Blumcraft of Pittsburgh v. Citizens & S. Nat. Bank of S.C.,
407 F.2d 557 (4th Cir. 1969) ..............................................................................21
In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ................................................................23, 39, 48
In Re Cohn,
23 C.C.P.A. 766 (1935) ................................................................................18, 41
Crocs, Inc. v. Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010) ..........................................................................24
Depaoli v. Daisy Mfg. Co.,
No. 07-CV-11778-DPW, 2009 WL 2145721 (D. Mass. July 14,
2009) .....................................................................................................................7
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) .....................................................................passim
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ..............................................................5, 6, 23, 24
Harmon Paper Co. v. Prager,
287 F. 841 (2nd Cir. 1923) .................................................................................21
iii

In Re Haruna,
249 F.3d 1327 (Fed. Cir. 2001) ....................................................................18, 40
High Point Design, LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013) ..........................................................................23
Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ....................................................................23, 24
King Pharm., Inc. v. Eon Labs, Inc.,
616 F.3d 1267 (Fed. Cir. 2010) ..........................................................................25
Knauf Insulation, LLC et al. v. Johns Manville Corporation, et al.,
1:15-cv-00111-WTL-MJD (S.D. Ind.) ................................................................. 1
In re Nalbandian,
661 F.2d 1214 (C.C.P.A. 1981) ..........................................................................25
Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
739 F.3d 694 (Fed. Cir. 2014) .............................................................................. 5
Schering Corp. v. Geneva Pharm.,
339 F.3d 1373 (Fed. Cir. 2003) ..........................................................................24
SmithKline Beecham Corp. v. Apotex Corp.,
403 F.3d 1331 (Fed. Cir. 2005) ..........................................................................25
Starhome GmbH v. AT&T Mobility LLC,
743 F.3d 849 (Fed. Cir. 2014) ..............................................................................6
Times Three Clothier, LLC v. Spanx, Inc.,
No. 13-CV-2157-DLC, 2014 WL 1688130 (S.D.N.Y. Apr. 29,
2014) .....................................................................................................................6
Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996) .............................................................................. 7
Statutes
35 U.S.C. 102 .................................................................................................passim
35 U.S.C. 103 .................................................................................................passim

iv

Other Authorities
37 C.F.R. 1.84(a)(2) .................................................................................................10
37 C.F.R. 42.8 .........................................................................................................1
37 C.F.R. 42.15(A) AND 42.103 .......................................................................... 2
37 C.F.R. 42.100(b) ................................................................................................5
37 C.F.R. 42.104(a).................................................................................................3
37 C.F.R. 42.104(b) ................................................................................................3
37 CFR 1.84(u)(1) ....................................................................................................10
77 Fed. Reg. 48756, 48764 (Aug. 14, 2012) ............................................................. 5
MPEP .......................................................................................................................17
MPEP 1503.02.V .....................................................................................................10
MPEP 2144.03 ...................................................................................................11, 12
MPEP 1504.01(c) ..................................................................................................20

I.

INTRODUCTION
Johns Manville Corporation and Johns Manville, Inc., (collectively,

Petitioners) request inter partes review of the claim of U.S. Design Patent No.
D631,670 (the 670 patent) (Ex. 1001), purportedly owned by Knauf Insulation
LLC and Knauf Insulation SPRL (collectively, Patent Owners). For the reasons
set forth below, the sole claim of the 670 patent is unpatentable because it would
have been obvious in light of two primary prior art references considered in
combination with certain secondary references. Alternatively, according to a claim
construction position recently advocated by the Patent Owners in a pending IPR,
the claim is anticipated by each of the two primary prior art references identified in
this Petition, and is thus unpatentable.
II.

MANDATORY NOTICES UNDER 37 C.F.R. 42.8

Real Parties-in-Interest: Johns Manville Corporation and Johns Manville,

Inc. are the real parties-in-interest.

Related Matters: The Patent Owners have sued Petitioners, alleging
infringement of the 670 patent. Knauf Insulation, LLC et al. v. Johns Manville

Corporation, et al., 1:15-cv-00111-WTL-MJD (S.D. Ind.). The 670 patent also is

the subject of pending IPR2015-01453.1
Lead and Back-Up Counsel and Service Information:
Lead Counsel

Back-Up Counsel
David E. Sipiora
(pro hac vice to be filed)
Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
dsipiora@kilpatricktownsend.com
(303) 571-4000 (telephone)
(303) 571-4321 (facsimile)

Kristopher L. Reed
Registration No. 58694
Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
kreed@kilpatricktownsend.com
(303) 571-4000 (telephone)
(303) 571-4321 (facsimile)

The following email address may be used for service and all
communications to both Lead and Backup Counsel:
JMIPR@kilpatricktownsend.com
III.

PAYMENT OF FEES UNDER 37 C.F.R. 42.15(A) AND 42.103

The required fees are submitted herewith. If any additional fees are due at

any time during this proceeding, the Office is authorized to charge such fees to
Deposit Account No. 20-1430.

As of the filing date of this Petition, Patent Owner has filed a Preliminary

Response in IPR2015-01453, but the Board has not yet entered an Institution
Decision.
2

IV.

GROUNDS FOR STANDING

Petitioners certify that, under 37 C.F.R. 42.104(a), the 670 patent is

available for inter partes review, and Petitioners are not barred or estopped from
requesting inter partes review of the 670 patent on the grounds identified in this
Petition.
V.

IDENTIFICATION OF CHALLENGE
Pursuant to 37 C.F.R. 42.104(b), Petitioners request inter partes review

based on the following prior art that was not cited during prosecution:
Exhibit

Description

Publication Date

Ex. 1004

Johns Manville Thermal and Acoustical

Equipment Insulations for OEM
Applications Brochure

December 1997

Ex. 1005

Johns Manville The Worldwide Leader in

Thermal and Acoustical Equipment
Insulations for OEM Applications Brochure

October 2000

Ex. 1006
Ex. 1007
Ex. 1008
Ex. 1009

Owens Corning PROPINK Smartperm

Vapor Retarder
Johns Manville SG Series Spin-Glas &
Range Spin Glas
Soundproofing Your Walls, The Family
Handyman Magazine
Knauf: Timber Frame External Walls: NonResidential Brochure

August 2004
September 1997
June 1998
July 2005

Ex. 1010

Owens Corning 2006 At A Glance Report

October 2006

Ex. 1011

Owens Corning 2007 Progress Report

June 2008

Petitioner requests inter partes review based on the following four grounds:
3

Ground

Description

Obviousness under 103 by Johns Manville Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (Ex. 1004) in
combination with either Soundproofing Your Walls, The Family
Handyman Magazine (Ex. 1008) or Owens Corning 2006 at a
Glance Report (Ex. 1010).

Obviousness under 103 by Johns Manville The Worldwide Leader in

Thermal and Acoustical Equipment Insulations for OEM Applications
Brochure (Ex. 1005) in combination with either Soundproofing Your
Walls, The Family Handyman Magazine (Ex. 1008) or Owens Corning
2006 at a Glance Report (Ex. 1010).

Anticipation under 102 by Johns Manville Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (Ex. 1004)

Anticipation under 102 by Johns Manville The Worldwide Leader in

Thermal and Acoustical Equipment Insulations for OEM Applications
Brochure (Ex. 1005)
Section VII explains how the 670 patents sole claim should be construed,

and Section IX explains how each claim element is found in, or rendered obvious
by, the prior art.
VI.

OVERVIEW OF U.S. PATENT NO. D631,670

The 670 patent, entitled Insulation Material, was filed on December 31,

2008, as Application No. 29/311,136, and issued on February 1, 2011. The 670
patent consists of a single claim for the ornamental design of insulation material.
See Ex. 1001, Claim. One color photocopy figure constitutes the entire claim and
depicts ordinary insulation material. See id.

VII. CLAIM CONSTRUCTION

A.

Legal Standard for Claim Construction of a Design Patent

A claim subject to inter partes review receives the broadest reasonable

construction in light of the specification of the patent in which it appears. 37
C.F.R. 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48764 (Aug. 14, 2012). As a design patent, the scope of the 670 patent is
defined by the claim (i.e., the drawing, which in this case is a color photocopy), in
conjunction with its description. See Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R. 1.152); also Pac. Coast Marine
Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014).
The Federal Circuit directs that the preferable course ordinarily will be for
a district court not to attempt to construe a design patent claim by providing a
detailed verbal description of the claimed design. Egyptian Goddess, 543 F.3d at
679. However, the Federal Circuit has noted that it can be helpful to point out . . .
various features of the claimed design as they relate to the . . . prior art and has
stated that it is important to emphasize that a district courts decision regarding
the level of detail to be used in describing the claimed design is a matter within the
courts discretion, and absent a showing of prejudice, the courts decision to issue a
relatively detailed claim construction will not be reversible error. Id. at 679-80.

Like a utility patent, the claim scope of a design patent may be limited by
statements made during prosecution. See id. at 680; Donald S. Chisum, Chisum on
Patents 23.05[7] (2013) (Decisions confirm that a design patents prosecution
history may limit its scope). The words of a claim are generally to be given their
ordinary and customary meaning as understood by a person of ordinary skill in the
art when read in the context of the specification and prosecution history.
Starhome GmbH v. AT&T Mobility LLC, 743 F.3d 849, 856 (Fed. Cir. 2014). A
patentee, however, can act as his own lexicographer to specifically define terms of
a claim contrary to their ordinary meaning. Abraxis Bioscience, Inc. v. Mayne
Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed. Cir. 2006). Similarly, a design
patentee may disavow[ ] the full scope of a claim term either in the specification
or during prosecution. Times Three Clothier, LLC v. Spanx, Inc., No. 13-CV2157-DLC, 2014 WL 1688130, at *2 (S.D.N.Y. Apr. 29, 2014) (citation omitted).
Thus, in Egyptian Goddess, the Federal Circuit explained that a district court
may guide the fact finder by addressing certain issues that bear on the scope of a
design patent claim, including, inter alia, the effect of any representations that
may have been made during the prosecution history. 543 F.3d at 680 (citing
Goodyear Tire, 162 F.3d 1113, 1116 (Fed. Cir. 1998)). The Courts description in
Egyptian Goddess of the use of the prosecution history in determining the scope of
a design patent is consistent with the claim construction process for utility patents,
6

which allows for statements made during prosecution to be considered as intrinsic

evidence defining the scope of a claim. See, e.g., Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (It is well-settled that, in interpreting an
asserted claim, the court should look first to the intrinsic evidence of record, i.e.,
the patent itself, including the claims, the specification and, if in evidence, the
prosecution history.) (citation omitted); also Apple, Inc. v. Samsung Electronics
Co., No. 11-CV-01846-LHK, 2012 WL 3071477, at *9 (N.D. Cal. July 27, 2012)
(quoting Egyptian Goddess for this legal proposition and finding that [m]oreover,
the prosecution history of the D677 Patent establishes that the broken lines were
intended to be disclaimed. The patent application contained a broken line
disclaimer, which remained through the final amendment. Thus, it seems likely
that the absence of a broken line disclaimer in the D677 Patent that was issued was
inadvertent. Because the prosecution history supports the broken line disclaimer,
the public notice function regarding the meaning of the broken lines in the D677 is
served. Thus, the D677 Patent disclaims all subject matter but the front surface.)
(internal citations omitted); Depaoli v. Daisy Mfg. Co., No. 07-CV-11778-DPW,
2009 WL 2145721, at *6 (D. Mass. July 14, 2009) (The scope of a design patent,
like that of a utility patent, may be limited by the applicants representations during
the patents prosecution history.) (citations omitted).

Hence, although the claim construction process for design patents primarily
involves reference to the depiction of the claimed design (i.e., the drawing itself),
the words used by the patentee in describing that design may be highly relevant
and limit the scope of a claim. This includes the patentees use of words for the
title of the design. See, e.g., Application of Zahn, 617 F.2d 261, 2653 (C.C.P.A.
1980) (finding that [t]he title is of great importance in a design application and
limiting the claimed design to only the shank of the drill bit, and not including the
cutting portion, when the title of the design patent Shank of Drill Bit was
construed together with the description of the figures).
B.

Claim Construction of the 670 Patent

The claim construction discussion herein is intended to aid this proceeding

and does not waive any arguments concerning lack of ornamentality, enablement,
or functionality that may be raised in litigation. Because claim terms may be
construed according to different standards in litigation versus PTO proceedings,
Petitioners reserve the right to present different constructions depending on the
applicable standard and proceeding, should it be necessary. In particular,
Petitioners believe that the claimed design is invalid for a number of reasons that
cannot be raised in the context of an inter partes review proceeding. All such
invalidity defenses are expressly reserved.

For purposes here, claim construction of the 670 patent begins with the
patentees claim of the ornamental design for insulation material, as shown and
described. Ex. 1001 at 1. The 670 patent contains a single figurea color copy
of a photograph depicting ordinary light-density fiberglass insulation.
1.

The Prosecution History of the 670 Patent

Original Application
The 670 patent, titled Insulation Material, was filed on December 31,
2008, as Application No. 29/311,136 (the 136 Application) with one claim and
a specification stating that Fig. 1 is a front perspective view of INSULATION
MATERIAL showing a first embodiment of my new design. Only elements
present in the view shown are claimed. The boundaries of the view shown are
arbitrary, and the design continues in similar fashion beyond the field of view
shown. 136 Application Prosecution History, Design Patent Application
Transmittal (Dec. 31, 2008) (Ex. 1002 at 79). The application was filed with a
Petition To Accept Color Photograph, explaining that [i]t is believed that a color
photograph is the sole practical medium by which to disclose the subject matter of
the application. 136 Application Prosecution History, Petition To Accept Color
Photograph Under 37 C.F.R. 1.84(b)(2) (Dec. 31, 2008) (Ex. 1002 at 83).

Non-Final Office Action

On August 6, 2010, the Examiner issued a Non-Final Office Action. In the
action, the Examiner objected to the petition to accept a color photograph, to the
drawing, and to the specification, and ultimately rejected the sole claim. See 136
Application Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 2834). The Examiner objected to the petition to accept a color photograph because
the petition did not meet the requirements of 37 C.F.R. 1.84(a)(2), instructing that
[a] grantable petition under 37 CFR 1.84(a)(2) must explain that color drawings
or color photographs are necessary because color is an integral part of the claimed
design. MPEP 1503.02.V. Id. at 29. The Examiner objected to the Applicants
use of the title Fig. 1 in the drawing because [w]here only a single view is used
in an application to illustrate the claimed design, it must not be numbered and the
abbreviation FIG. must not appear. 37 CFR 1.84(u)(1). Id. The Examiner
objected to the specification, requiring that Fig. 1 be replaced with [t]he sole
figure and the words of a first embodiment be deleted from the figure
description. Id. at 30. The Examiner also objected to the description of the sole
view as a front perspective view because the view appears to be a top plan
view. The view shows none of the discernible three-dimensional qualities of a
perspective view. Id. The Examiner also requested deletion of the sentence
stating that [o]nly elements in the view shown are claimed under the reasoning
10

that in US design patent practice the design claim is limited to what is shown and
described in the drawings and specification. Id.
The Examiner further rejected the applications sole claim based on 35
U.S.C. 102, 103, and 112. See id. at 30-33. Under 35 U.S.C. 102, the
Examiner held that the claim was clearly anticipated by the Foltz Buildings. Id.
at 30-31. The Foltz Buildings reference (Foltz) contains photographs of yellow
fiberglass insulation installed in the walls of a building. See id. at 31. The file
history contains a black and white reproduction of one image and a link to the
Foltz website where multiple images can be seen. See id. In the 102 analysis,
the Examiner took official notice that the claim appears to be for ordinary
fiberglass batt-type insulation material and has no aesthetic effect that is unique or
different from the common appearance of fiberglass batt insulation material.
MPEP 2144.03. Id. at 30. The Examiner further held that the shape and
appearance of Foltz Buildings insulation material is identical in all material
respects to that of the claimed design. Id. at 31.
Under 35 U.S.C. 103, the Examiner characterized the Foltz insulation as
insulation material that includes long fibers that have an overall appearance
remarkably similar to the claimed design. Id. at 32. The Examiner went on to
outline the design characteristics that are basically the same between Foltz and
the claimed invention: [t]he fibers of the insulation material have been pressed
11

together to form a cloud like appearance and [t]he reference has design
characteristics, which are basically the same as the claimed design. Id. at 33.
The Examiner also noted two differences between Foltz and the claimed
invention: (i) the close-up nature of the photograph of the claimed invention versus
that of Foltz, which was taken at a distance farther away from the insulation; and
(ii) the difference in swirl patterns between the designs. See id. The Examiner
further supported the 103 rejection with the explanation that [t]he difference in
scale plays no role in mitigating the effectiveness of the cited prior art, as scale of a
design cannot form the basis for patentability and that [v]ariations in swirl
pattern of the material are considered normal in batt insulation materials, as
evidenced by reviewing the prior art listed by the examiner. Id.
Under 35 U.S.C. 112, the Examiner rejected the claim as indefinite
because of the applicants phrase in the specification the design continues in
similar fashion beyond the field of view shown. Id. The Examiner highlighted
that [s]uch characterization of the appearance of the overall design is improper, as
it is not in such full, clear, concise, and exact terms as to enable any person skilled
in the art to which it pertainsto make and use the same without resort to
conjecture. Id. The Examiner further held that the claim was not enabled because
[t]he scope of protection sought is not accurately or adequately defined. Id.

12

In summary, the application was objected to and rejected on multiple

grounds, and the Examiner identified at least the following elements in the claimed
design that were present in the prior art and that rendered the claimed design
anticipated and/or obvious: (1) insulation material; (2) with a cloud-like
appearance; and (3) variations in a swirl pattern.
Examiner Interview
On September 14, 2010, counsel for the Applicant conducted an Examiner
Interview at the USPTO. See 136 Application Prosecution History, Interview
Summary (Sept. 14, 2010) (Ex. 1002 at 25-26). The Examiners summary of the
interview indicates that counsel for the Applicant and the Examiner agreed that a
Replacement Drawing would be filed of much higher quality than the original so
that with a greater resolution the darker and lighter areas would have more
contrast and would permit better understanding of the claimed designs drastic
differences in contrast. Id. at 26. There is no record that counsel for the
Applicant ever argued that the claimed design was based in any way on specific
colors, but instead urged that a color drawing was needed solely to allow
appreciation of the differences in contrast in the drawing, that is, the lightness
and darkness present in the image. See id.
The Examiner also stated it was noted that there appeared to be a very
slight indication in some places on the sole figure that there may be a waffle
13

pattern in evidence of production processes. Id. Agreement between the

Examiner and Applicants counsel was also noted regarding changes to the
specification, substitutions, and the deletion of some wording. Id.
Response to Non-Final Office Action
On September 24, 2010, the Applicant submitted a response to the
Examiners Office Action. See 136 Application Prosecution History, Resp. to
Office Action (Sept. 24, 2010) (Ex. 1002 at 15-21). In the response, the Applicant
amended the specification partially in accordance with the Examiners objection,
amending Fig. 1 to refer to [t]he sole figure and removing reference to a first
embodiment of. Id. at 19. The Applicant failed to correct the language objected
to by the Examiner as inaccurately describing the figure as a front perspective
view. See id. The Applicant further amended the specification to remove the
language stating that the design continues in similar fashion beyond the field of
view shown. Id. at 21.
In responding to the rejections of the claim under 35 U.S.C. 102 and 103,
the Applicant did not address any of the three elements of the claimed design
identified by the Examiner in the Office Action. In particular, the Applicant did
not challenge or attempt to correct the Examiners findings that the prior art
showed insulation material that commonly had a cloud-like appearance and
variations in the swirl pattern. Instead, the Applicant focused on an additional
14

element not mentioned in the prior office action or interview, arguing that the cited
reference, Foltz, fails to disclose or suggest an insulation material with a variation
of distinct hues throughout the insulation material, as claimed in the design of the
present invention. Id. at 19. The Applicant argued that Foltz instead discloses
an insulation material with the same hue yellow throughout. To the extent
there are variations in the color of Foltz, the hue remains constant and the
variations are merely the changes in the lightness of yellow. Id. The Applicant
contrasted this same hue in the prior art with the claimed invention which
includes a variation of distinct hues. Id. at 20. Although Foltz is a yellow-color
insulation and Applicants insulation design is not, the Applicant did not attempt
to distinguish Foltz based on its yellow color per se, but instead focused
exclusively on the number of distinct hues present. The Applicant also did not
provide any definition of the alleged variation of distinct hues. Instead, the
Applicant merely provided an example of what he considered to represent a
variation of distinct hues, specifically, a combination such as brown and cream.
Id.
The Applicant also attempted to distinguish Foltz on the basis that it fails to
disclose or suggest an insulation material with a waffle pattern on the surface. Id.
The Applicant did not provide a definition of waffle pattern, and this mention of
a waffle pattern appears to stem from the Examiners brief observation in the
15

Interview Summary of a very slight indication in some places on the sole figure
that there may be a waffle pattern in evidence of production processes in the
drawing. 136 Application Prosecution History, Interview Summary (Sept. 14,
2010) (Ex. 1002 at 26).
In summary, in his Response to the Office Action, to overcome the
Examiners rejection, the Applicant expressly sought to add two distinct elements
to his claim: a waffle pattern and a variation of distinct hues.
Petition To Accept Color Photograph
In conjunction with filing the Response to the Office Action, on September
24, 2010, the Applicant filed a revised Petition For Color Photograph. See 136
Application Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex. 1002
at 13). As mandated by the Examiner, the revised petition states that [a] color
photograph is necessary because color is an integral part of the claimed invention.
Id. The Applicant provided no further explanation as to how color is related to the
claimed invention.
Notice of Allowability
On December 10, 2010, the Examiner issued a Notice of Allowance and
accepted the claim and drawings without a statement of reasons. See 136
Application Prosecution History, Notice of Allowance and Fee(s) Due (Dec. 10,
2010) (Ex. 1002 at 7-8).
16

Final Summary of the 670 Patent Elements Disclosed in the File History
As described above, the file history of the 670 patent sets forth five
elements associated with the claimed design: (1) insulation material; (2) with a
cloud-like appearance; (3) with variations in a swirl pattern; (4) with a waffle
pattern; and (5) with a variation of distinct hues. See generally 136 Application
Prosecution History (Ex. 1002).
Notably, no specific color per se is an element of the 670 patents claim,
just a variation of distinct hues. In particular, brown and cream were never
claimed by the Applicant during prosecution, but instead merely cited as examples
of the variation of distinct hues purportedly shown in the photocopy. The
Applicant did later recite that color is an integral part of the claimed invention
when revising his Petition To Accept a Color Photograph, but only as a
perfunctory repetition of the Examiners citation to the MPEP requirement that the
petition must explain that color drawings or color photographs are necessary
because color is an integral part of the claimed design. 136 Application
Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 29). Although
repeating the Examiners words, the Applicant did not identify any particular color
or colors that are integral, nor did the Applicant assert that color is integral to

17

the claimed invention beyond the variation of distinct hues described

previously. 2
2.

Analysis of the Potential Claim Elements

(a)

Insulation material

The 670 patents title, sole claim, and file history all designate that the
claimed design is for insulation material. See Ex. 1001; generally Ex. 1002.
Therefore, insulation material properly is a claim element.
(b)

Cloud-like appearance

The 670 patent claims insulation material with a cloud-like appearance.

During prosecution, the Examiner characterized the fibers of the insulation
material as having been pressed together to form a cloud like appearance. See

The Federal Circuit has held that color may play a role in the patentability of a

claimed design, but the patentability of a design may not rest on color alone. In
Re Haruna, 249 F.3d 1327, 1334, 1336 (Fed. Cir. 2001) (citations omitted). To be
an essential feature of a design, color must be so defined or connected with some
symbol or design. In Re Cohn, 23 C.C.P.A. 766, 768 (1935). In this case, the
purported colors of the insulation depicted in Applicants drawing (e.g., such as
brown and cream) have never been defined or connected with any symbol or
design.

18

Ex. 1002 at 33. This characterization was not challenged by the Applicant.
Therefore, insulation having a cloud like appearance properly is a claim element.
(c)

Variations in a swirl pattern

The 670 patent claims insulation material that contains variations in a swirl
pattern a well-known characteristic of insulation material. See id. During
prosecution, the Examiner characterized the design as having a surface swirl
pattern and further explained that [v]ariations in swirl pattern of the material are
considered normal in batt insulation materials, as evidenced by reviewing the prior
art listed by the examiner. See id. Therefore, variations in a swirl pattern
properly is a claim element.
(d)

Waffle pattern

For the reasons stated below, and explained in greater detail in the
Declaration of Martin J. Bide (Bide Decl.) in conjunction with the Declaration of
Mark A. Granger (Granger Decl.), a waffle pattern is not properly considered
part of the claimed ornamental design. See Bide Decl. at 21, 23-24 (Ex. 1013);
Granger Decl. at 6-10 (Ex. 1015). The 670 patent prosecution history first
mentions a waffle pattern in the Examiners Interview when the Examiner (not the
Applicant) observed that there appeared to be a very slight indication in some
places on the sole figure that there may be a waffle pattern in evidence of
production processes. 136 Application Prosecution History, Interview Summary

19

(Sept. 14, 2010) (Ex. 1002 at 26). As explained by Professor Bide, the claim of a
waffle pattern is likely an allusion to what appear to be bumpy vertical lines in
the 670 patent drawing depicting a type of geometric pattern imprinted on the
surface of the insulation material. See Bide Decl. at 23 (Ex. 1013). Mr.
Grangers testimony confirms this interpretation of the drawing. See Granger
Decl. at 6-8 (Ex. 1015); see also Bide Decl. at 21, 23-24 (Ex. 1013). In
particular, such a faint waffle pattern is common on the surface of light-density
fiberglass insulation and, as the Examiner surmised, is merely evidence of
production processes. See Granger Decl. at 6-10 (Ex. 1015) (explaining the
fiberglass production process in detail). Specifically, fiberglass insulation that is
sprayed with a binder typically comes to rest on a conveyor belt of a chain-like or
meshed nature (allowing air to contact the fiberglass from underneath) and is
passed through parallel conveyor belts for the drying/curing process. Id. at 5-6.
During this drying/curing process, the pattern of the chain or mesh is imprinted on
both sides of the insulation material. Id. at 6-8. Hence, as inferred by the
Examiner, and as common sense would suggest, this waffle pattern is not an
ornamental feature but simply evidence of the well-known insulation production
process.
The law is well established that such an artifact of a production process
cannot constitute an element of an ornamental design. See MPEP 1504.01(c) (a
20

valid design patent must be the result of a conscious act by the inventor,
representing an exercise of the inventive faculty); Blumcraft of Pittsburgh v.
Citizens & S. Nat. Bank of S.C., 407 F.2d 557, 560 (4th Cir. 1969) (The statutory
grant of a design patent is for appearance and not for a method of manufacture or
assemblage, function, or utility.) (citations omitted); Blisscraft of Hollywood v.
United Plastic Co., 189 F. Supp. 333, 336 (S.D.N.Y. 1960) (It must be motivated
by ornamental or decorative inventiveness because a design dictated solely by
mechanical or functional requirements is not patentable.) (citations omitted); also
Harmon Paper Co. v. Prager, 287 F. 841, 843 (2nd Cir. 1923) (invalidating a
design patent on wallpaper created by a certain method of manufacturing the paper,
and stating that what plaintiff really seeks is to cover with this design patent all
paper resulting from the method of manufacturing above described. This cannot be
done.). As described in the Granger Declaration and observed by the Examiner,
the claimed waffle pattern in this design is a well-known byproduct of the
commercial process used to manufacture light-density fiberglass insulation. As
such, a waffle pattern should not be considered an element of the sole claim of
the 670 design patent.
(e)

Variation of distinct hues

The 670 patent claims insulation material that contains a variation of

distinct hues, as exemplified in the sole figure. During the Examiner interview,
21

the Examiner commented that a Replacement Drawing was to be filed which

would have more contrast and would permit better understanding of the claimed
designs drastic differences in contrast. See 136 Application Prosecution
History, Interview Summary (Sept. 14, 2010) (Ex. 1002 at 26). Subsequently, in
Applicants Remarks Made in Amendment, the Applicant stated that the claimed
invention includes a variation of distinct hues, and distinguished the claimed
invention from the prior art to overcome an Examiners rejection by stating that the
cited prior art reference discloses an insulation material with the same hue. See
136 Application Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex.
1002 at 19-20). Notably, the Applicant did not distinguish the prior art on the basis
of any specific color, but solely on the absence of a purported variation of distinct
hues. Further, as noted previously, Applicant provided no definition or guidance
on how to interpret the meaning of the phrase variation of distinct hues.
Therefore, its ordinary meaning applies.
VIII. THE APPLICABLE LEGAL STANDARDS
A.

Obviousness

The test for determining obviousness of a design patent under 35 U.S.C.

103 is whether the claimed design would have been obvious to a designer of
ordinary skill who designs articles of the type involved. Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citation omitted); see also

22

Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). This
inquiry focuses on the visual impression of the claimed design as a whole and not
on selected individual features. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir.
1996) (citations omitted). The inquiry is whether one of ordinary skill would
have combined teachings of the prior art to create the same overall visual
appearance as the claimed design. Durling, 101 F.3d at 103.
The first step in an obviousness inquiry is to identify a single reference,
which already exists, that has basically the same design characteristics as the
claimed design. Durling, 101 F.3d at 103 (citation omitted). Second, other
references may be used to modify [the primary reference] to create a design that
has the same overall visual appearance as the claimed design. Id. (citation
omitted); see also High Point Design, LLC v. Buyers Direct, Inc., 730 F.3d 1301,
1311 (Fed. Cir. 2013). The secondary references may be used to modify the
primary reference if the two are so related that the appearance of certain
ornamental features in one would suggest the application of those features to the
other. In re Borden, 90 F.3d at 1575 (citations omitted).
B.

Anticipation

The ordinary observer test is used to determine anticipation of a design

patent under 35 U.S.C. 102. See Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying Egyptian Goddess to the test for
23

anticipation). In the ordinary observer test, the design as claimed is compared

with a prior art reference and the Court determines whether an ordinary observer,
familiar with the prior art, would believe that, taken as a whole, the prior art
reference and the claimed design are the same. Egyptian Goddess, 534 F.3d 665,
675, 681 (Fed. Cir. 2008); Sensio, Inc. v. Select Brands, Inc., IPR2013-00500,
Paper 8 at 8 (PTAB Feb. 11, 2014) (confirming use of the ordinary observer test
for anticipation of a design patent). This comparison thus takes into account only
significant differences between two designs; minor differences cannot prevent a
finding of anticipation. Intl Seaway, 589 F.3d at 1243; Sensio, IPR2013-00500,
Paper 8 at 14. Comparison of the overall visual effect of the designs looks to
whether, to an ordinary observer, the claimed design and prior art are substantially
the same. See Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294, 1303 (Fed. Cir.
2010) (citations omitted).
C.

Inherency

Under the doctrine of inherent anticipation, a claim limitation that is not

explicitly disclosed by a prior art reference may be inherently anticipated if the
limitation is necessarily present, or inherent, in the single anticipating reference.
Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Inherent
anticipation applies even if the inherent feature would not have been recognized by
one skilled in the art at the time of the invention. Id. at 1377-78. The Federal
24

Circuit has recognized [t]he patent law principle that which would literally
infringe if later in time anticipates if earlier. Id. at 1379 (quoting Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). A
limitation claiming the natural result flowing from the prior arts limitations will
be considered anticipated. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1275-76 (Fed. Cir. 2010); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d
1331, 1343-44 (Fed. Cir. 2005).
D.

One of Ordinary Skill

In this case, one of ordinary skill would be someone with a background and
training in color and color management. See Bide Decl. at 13 (Ex. 1013); also In
re Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A. 1981) (In design cases we will
consider the fictitious person identified in [section] 103 as one of ordinary skill in
the art to be the designer of ordinary capability who designs articles of the type
presented in the application.). This person would be capable of understanding
color science, the communication of color, and the relevant language of color. See
Bide Decl. at 13 (Ex. 1013). This person would routinely examine and specify
color as part of their job responsibilities, and could be a professional in one of
several different industries: a graphic designer, a person involved in the
measurement of color in textiles, a color consultant, a color measurement
instrument professional, or a person involved in paint pigmentation. Id. One of
25

ordinary skill could have either an undergraduate degree in color science or the
equivalent training as part of his or her professional work at a color lab or color
instrument manufacturer. Id.
IX.

DETAILED EXPLANATION OF GROUNDS FOR

UNPATENTABILITY UNDER THE BROADEST REASONABLE
CONSTRUCTION
The 670 patent is obvious under 35 U.S.C. 103 on multiple grounds. The

references and grounds cited are not cumulative to each other. One of ordinary
skill in the art would recognize these references to be important and relevant in
deciding whether the claim is patentable. The arguments below follow the analysis
presented in, and are supported by, the accompanying declaration of Professor
Martin J. Bide, who has taught and worked in the field of color for more than 30
years. See Ex. 1013. With respect to the fourth alleged claim element (the
purported waffle pattern), analysis and support also is found in the
accompanying declaration of Mark A. Granger, who has worked in the area of
insulation manufacturing for nearly 40 years. See Ex. 1015.
A.

Ground 1: The Claim Would Have Been Rendered Obvious

Under 103 by the Johns Manville Thermal and Acoustical
Equipment Insulations for OEM Applications Brochure (Ex.
1004) in View of Either Soundproofing Your Walls, The Family
Handyman Magazine (Ex. 1008) or Owens Corning 2006 at a
Glance Report (Ex. 1010)

The Johns Manville Thermal and Acoustical Equipment Insulations for

OEM Applications Brochure (JM 1997 Brochure) (Ex. 1004), considered in
26

combination with either of two secondary references, renders the 670 patent
design obvious under 35 U.S.C. 103.
The JM 1997 Brochure is a printed advertising brochure published in
December 1997 many years prior to the filing date of the 670 patent. Ex. 1004
at 14; see also Mota Decl. at 2 (Ex. 1017); Mullendore Decl. at 6 (Ex. 1003).
Therefore, the JM 1997 Brochure is a prior-art printed publication under 102(b).
Below is a visual comparison between the 670 patent claim and an image excerpt
from the JM 1997 Brochure:

Jackson 670

27

JM 1997 Brochure

Comparing the two images, it is clear that they have basically the same design
characteristics, such that they are substantially similar. See Durling, 101 F.3d at
103 (Before one can begin to combine prior art designs, however, one must find a
single reference, a something in existence, the design characteristics of which are
basically the same as the claimed design.) (citation omitted).
1.

Elements 1-3

Both designs are (1) insulation material with (2) a cloud-like appearance,
and (3) variations in a swirl pattern. 3 See Bide Decl. at 38 (Ex. 1013).

As characterized by the Examiner during prosecution, variations in a swirl pattern

are considered normal in batt insulation materials. See 136 Application

Prosecution History, Office Action at 6 (Aug. 6, 2010) (Ex. 1002 at 33).
28

2.

Alleged Element 4
(a)

A Waffle Pattern Is Inherent in Light-Density

Fiberglass Insulation

As discussed previously in Section VII, a waffle pattern should not be

considered an element of the 670 patent claim. Nevertheless, even if this
comment from the file wrapper is considered a claim element, it is inherent in the
light-density fiberglass insulation products depicted in the references relied upon in
this Petition. This conclusion is supported by the Declaration of Mark A. Granger,
an engineer with nearly four decades of experience in the manufacture of fiberglass
insulation for Owens Corning and Johns Manville two global fiberglass industry
leaders.
As a result of his experience, Mr. Granger has personal knowledge of the
methods and equipment used in the manufacture of fiberglass insulation. Granger
Decl. at 1-3 (Ex. 1015). There are only a few companies in the U.S. that
manufacture fiberglass insulation, and he is generally familiar with the processes
that are used by each to make such products. Id. at 3-4. Indeed, these
manufacturing techniques have been in use for more than 30 years. Id. at 4. In
particular, the processes he describes in his declaration have been widely used by
JM and others since at least the year 2005 when he started work at JM. Id. And
the same or similar methods and equipment were in continuous use during his
entire tenure at Owens Corning from 1976 - 2005. Id.
29

As Mr. Granger explains, in making fiberglass insulation, very small

diameter glass fibers are generated by melting sand-like materials using specialized
processes and machines. Id. at 5. When first made, the glass fibers are loose and
without structure. Id. In order to provide the product with sufficient form and
structure to be able to be installed (for example, vertically in walls), the insulation
must be adhered together using chemical binders (adhesives) that are sprayed on
the formed glass fibers, and thereafter the binder must be cured in a heated oven.
Id. While companies may use different binders, the process for curing the binders
on newly formed glass fibers is common and involves transporting the glass fibers
between upper and lower conveyor belts into an oven or kiln where the binder
solution and the glass fibers are heated to a standard curing temperature to adhere
the fibers together to become fiberglass insulation products. Id. at 6.
As further explained by Mr. Granger, conveyor belts that are used in the
process of fabricating fiberglass insulation share the common characteristic that
they imprint the heated glass fibers that are lying on the conveyor belt with the
surface pattern of the belt. Id. at 8. The surface of a conveyor belt in this context
is typically a metal mesh that allows hot gases to be forced through the fibers as
the binder is cured. Id. These metal mesh chains or metal plates with patterns
and perforationscalled flights quite predictably and normally leave a wafflelike pattern on the surface of the insulation reflecting the contact between the
30

conveyor belt surface and the top and bottom surfaces of the insulation bundle
during the curing stage of the production process. Id. In other words, the
conveyor belt pattern literally is baked onto the surface of the insulation as a result
of the heating process that is used to cure the binder, and thus subsequently is
visible to an observer of the cured fiberglass insulation product. Id.
As indicated in Mr. Grangers testimony, the appearance of a waffle or other
pattern imprinted on a surface of light-density fiberglass insulation is necessarily
part of the production process and is common to light-density fiberglass insulation
of the type depicted in the drawing of the 670 patent. Because this type of pattern
inevitably is present, this aspect of the claimed designeven if it is a considered
claim element (which it should not be)is inherent in the insulation disclosed in
each of the prior art references cited in this Petition.
(b)

A Waffle Pattern Is Disclosed in the JM 1997

Brochure (Ex. 1004)

Given that a waffle pattern inevitably is present in insulation products of

the type depicted in the prior art references cited in this Petition, it is no surprise
that the alleged waffle pattern element of the 670 patent claim is visible in the JM
1997 Brochure. In particular, the waffle pattern can be seen imprinted on the
surface of the cured fiberglass product in the below magnified segment of the JM
1997 Brochure, where there is a geometric pattern imprinted on the surface of the
cured fiberglass product. See Bide Decl. at 24, 38 (Ex. 1013).
31

3.

Element 5

The Applicant used the phrase a variation of distinct hues, but never
defined or explained any part of the phrase. Based on a simple visual assessment,
the JM 1997 Brochure shows some variation in hues, so the only potential
question is one of degree. To the extent the Board finds that the variation of
distinct hues in the JM 1997 Brochure does not meet this element of the 670

32

patent claim, 4 it would have been obvious to modify the variation of distinct hues
in the JM 1997 Brochure in light of either of two different references that each
show nearly identical insulation with an even greater variation of distinct hues
than that shown in the 670 patent image.
(a)

Scientifically Evaluating the Claim Element a

Variation of Distinct Hues

In the science of color, hue is not color per se, but rather refers to an
attribute of color. To scientifically assess a variation of distinct hues, Petitioners
retained Dr. Martin Bide of the University of Rhode Island who addressed the
issue by performing spectrophotometric analysis. As described in his
accompanying declaration, Dr. Bide used well-established techniques to quantify
hue as a numeric value. See Bide Decl. at 30-32 (Ex. 1013). In particular, Dr.
Bide used a spectrophotometer to shine light on a small area within the subject (in
this case, a copy of an image). Id. at 32. The spectrophotometer collected the
light reflected from the colored image and analyzed its intensity compared to that
of the original light at (typically) 10 nm intervals throughout the visible spectrum.
Id. Using an internationally recognized standard called CIE, Dr. Bide then

Alternatively, should the Board find that the JM 1997 Brochure discloses a

variation of distinct hues based on a simple visual assessment, the Board should
find the sole 670 patent claim unpatentable under 35 U.S.C. 102(b).
33

performed mathematical calculations on the reflectance data. Id. The result is

numerical expressions of lightness, chroma, and hue (L,c,h) values of the color
seen by the standard observer under the given light source. Id. For hue, this is the
hue angle measured in degrees. Id. This exercise effectively translates the
measured wavelength reflectance values into values that actually quantify what a
person (who sees color like the standard observer does) looking at the image would
see under that light source. Id. The foregoing technique was employed by Dr.
Bide to evaluate the patented design and used in an identical fashion to evaluate
additional prior art references to determine whether they possess a variation of
distinct hues as great or greater than the patented design. See id. at 37, 39-44.5

Importantly, Petitioners take no position here on the ultimate meaning of

variation of distinct hues. In fact, the claim is invalid because it is indefinite.

But for the purposes of analysis here, Petitioners are simply using Applicants own
design as the measuring stick, that is, the variation in distinct hues present in the
patented design. Thus, in evaluating Petitioners grounds under 103, the Board
need not decide here precisely how much variation in hue is needed to fall within
the claim as claimed by the Applicant. The range of variation of hues in each of
the two secondary references discussed is greater than the variation in hues shown
in the claimed 670 patent design. Thus it would have been obvious to modify the
34

(b)

Each of Two Secondary References Discloses

Insulation Products with a Greater Variation of
Distinct Hues than the 670 Patent Image

A variation of distinct hues is exceedingly common in ordinary lightdensity insulation of the type depicted in the 670 patent image, as seen in each of
the secondary prior art references included with this Petition. This is evidenced in
the Declaration of Martin J. Bide, in which he analyzed six different prior art
references, each of which renders the 670 patent claim obvious in combination
with the JM 1997 Brochure. See Bide Decl. at 38-45 (Ex. 1013). Nonetheless,
for reasons of efficiency, only two of these references are discussed below: (1) the
Family Handyman article entitled Soundproofing Your Walls by Mac Wentz
(Soundproofing) (Ex. 1008); and (2) The Owens Corning 2006 at a Glance
Report (OC 2006 Report) (Ex. 1010).
i.

Soundproofing (Ex. 1008) Discloses a Variation

of Distinct Hues

Soundproofing (Ex. 1008) is a magazine article published in June 1998

many years prior to the filing date of the 670 patent. Ex. 1008 at 6; see also
Barker Decl. at 3 (Ex. 1018). Therefore, Soundproofing is a prior art printed
publication under 102(b).

hues in the JM 1997 Brochure in a manner consistent with these secondary prior
art references.
35

With respect to claim element 5 (variation of distinct hues), using

spectrophotometric analysis on five or six distinct regions of the prior art images in
this reference, it was determined that three Soundproofing images (shown below)
each contain a variation of distinct hues. See Bide Decl. at 41 (Ex. 1013).

36

The 670 claimed design contains a variation of hue angles of 36.3. See Bide
Decl. at 37 (Ex. 1013). The variation of hue angles in the Soundproofing images
is greater: the Soundproofing I image contains a variation of hue angles of 49.7; the
Soundproofing II image contains a variation of hue angles of 40.9; and the
Soundproofing III image contains a variation of hue angles of 41.9. Id. at 37,
41. Hence, the Soundproofing reference discloses the fifth claim element of the
670 patent claim.
ii.

The OC 2006 Report (Ex. 1010) Discloses a

Variation of Distinct Hues

The OC 2006 Report (Ex. 1010) is a printed business document published in

October 2006 more than one year prior to the filing date of the 670 patent. Ex.
37

1010 at 40; see also Barker Decl. at 5 (Ex. 1018). Therefore, the OC 2006 Report
is a prior art printed publication under 102(b).
With respect to claim element 5 (variation of distinct hues), using
spectrophotometric analysis on five distinct regions of this prior art image (shown
below), it was determined that the OC 2006 Report image contains a variation of
distinct hues. See Bide Decl. at 43 (Ex. 1013).

Specifically, the OC 2006 Report image contains a variation of hue angles of 51.6
degrees, which is greater than the hue angles variation of 36.3 degrees in the 670
patent image. Id. at 37, 43. Therefore, the 670 patent claim element of a
variation of distinct hues is present in the OC 2006 Report image.
38

(c)

To the Extent Not Disclosed in the JM 1997 Brochure,

the Combination of the JM 1997 Brochure with Each
of Soundproofing and the OC 2006 Report Would
Have Been Obvious to One of Ordinary Skill

Using the framework for obviousness described above in Section VIII, the
primary JM 1997 Brochure reference has basically the same design
characteristics as the claimed 670 patent design, thus satisfying the first criterion
for showing obviousness. Durling, 101 F.3d at 103 (citation omitted). And to the
extent that the Board finds that the variation of distinct hues in the JM 1997
Brochure does not satisfy this claim element based on a simple visual comparison,
Soundproofing and the OC 2006 Report each contains a variation of distinct hues
even greater than the 670 patent design.
Thus, viewing the JM 1997 Brochure in light of either Soundproofing or the
OC 2006 Report yields a design that has substantially the same overall visual
appearance as the claimed design of the 670 patent. Specifically, such a
combination would be obvious for the reason that the JM 1997 Brochure and both
Soundproofing and the OC 2006 Report are so related that the appearance of
certain ornamental features in one would suggest the application of those features
to the other. In re Borden, 90 F.3d at 1575 (citations omitted). In particular, the
JM 1997 Brochure and both Soundproofing and the OC 2006 Report are highly
related in appearance because they each depict ordinary insulation products with a
cloud-like appearance and a variation in swirl pattern. Moreover, as discussed
39

previously (see Section IX.A.2(a), supra), the insulation products depicted in each
reference, either explicitly or inherently, would have a waffle pattern on its
surface. In addition, these products are manufactured by companies that directly
compete in the insulation industry. See Granger Decl. at 2 (Ex. 1015). Not to
mention that, on its face, the JM 1997 Brochure already shows some degree of hue
variation. So to the extent a variation of hues of a magnitude greater than or equal
to that shown in the 670 patent is required to meet this last claim limitation,
modifying the JM 1997 Brochure in light of the variation of distinct hues in
either Soundproofing or the OC 2006 Report would create a hypothetical reference
that has an overall appearance that is identical to that of the 670 patent design.
See Durling, 101 F.3d at 103. Hence, using a greater variation of distinct hues
would have been an obvious modification to the JM 1997 Brochure.
4.

Even If Brown and Cream Constitute a Claim Element,

the Claim of the 670 Patent Would Have Been Rendered
Obvious Under 103
(a)

Brown and Cream Should Not Be Considered a

Color Element of the Claim of the 670 Patent

As noted earlier, the Federal Circuit has held that color may play a role in
the patentability of a claimed design, but the patentability of a design may not rest
on color alone. In Re Haruna, 249 F.3d 1327, 1334, 1336 (Fed. Cir. 2001)
(citations omitted); see also Office Action in Reexamination Control No.
90/012,884 (Aug. 5, 2015), p. 3. To be an essential feature of a design, color
40

must be so defined or connected with some symbol or design. In Re Cohn, 23

C.C.P.A. 766, 768 (1935). In this Petition, Petitioner has demonstrated how the
Applicant for the 670 patent never claimed a specific color or combination of
colors as an element of the 670 patents claim, nor has any particular color been
connected with any symbol or design. See Section VII.B.1, supra. On the
contrary, the prosecution history of this patent reflects that the Applicant did not
claim color per se, but rather a variation of distinct hues in his drawing. Id.
In his original Petition To Accept a Color Photograph, the Applicant did
not claim any particular color and stated only that [i]t is believed that a color
photograph is the sole practical medium by which to disclose the subject matter of
the application. 136 Application Prosecution History, Office Action (Aug. 6,
2010) (Ex. 1002 at 83). After the Petition was rejected and the Applicant was
instructed that a proper Petition To Accept a Color Photograph must explain that
color drawings or color photographs are necessary because color is an integral part
of the claimed design, the Applicant still did not claim specific colors. Instead, as
reflected in the Examiners Interview Summary, it was agreed that a replacement
drawing was to be submitted which would be of much higher quality than the
original. Id. at 26. This higher quality drawing was not submitted to claim a
specific color, but rather because with a greater resolution the darker and lighter
areas would have more contrast and would permit better understanding of the
41

claimed designs drastic differences in contrast. Id. And when the Applicant
submitted his second Petition To Accept a Color Photograph, he merely repeated
the phrase color is an integral part of the claimed invention, but did not identify
any particular color that is integral, or explain how color is integral to the
claimed invention beyond the variation of distinct hues described previously.
See id. at 13.
Against this backdrop, Patent Owner should not now be permitted to claim
brown and cream together as a color element of the claimed design.
Nonetheless, in anticipation that the Patent Owners likely will make such an
argument in response to this Petition, Petitioner submits the following.
(b)

Even if Brown and Cream Are Considered a Color

Element of the Claim of the 670 Patent, the Claim Is
Still Obvious

Even if brown and cream are together deemed a color element of the claimed
design of the 670 patent (and they should not be), the sole claim is still rendered
obvious by the JM 1997 Brochure (Ex. 1004), either alone or in combination with
Soundproofing or the OC 2006 Report. Specifically, the 670 patent is rendered
obvious because the JM 1997 Brochure (i) possesses itself or, in combination with
Soundproofing or the OC 2006 Report, renders obvious all the other elements of
the claim for the reasons discussed previously (see Section IX.A.1-3, supra); and
(ii) itself possesses a color scheme that is nearly, if not entirely, identical to the
42

brown and cream color scheme depicted in the 670 patent drawing. Based on
these similarities, a designer of ordinary skill familiar with the relevant prior art
(see, e.g., Exs. 1004-1011) would believe that, taken as a whole, the JM 1997
Brochure is substantially the same design as the claimed design. See Durling, 101
F.3d at 103. Therefore, the 670 patents claim is rendered obvious by this
reference. See id. As such, the sole claim of the 670 patent is not patentable over
the JM 1997 Brochure, even if the colors brown and cream together improperly are
considered a color claim element.
5.

JM 1997 Brochure Conclusion

Based on the above similarities, and for the reasons stated, the JM 1997
Brochure contains all of the actual claim elements of the 670 patent claim;
however, to the extent it does not sufficiently disclose the variation of distinct
hues element of the 670 patent image, then in combination with either
Soundproofing or the OC 2006 Report, the JM 1997 Brochure renders the 670
patent obvious under 103. Hence, the Board should find that the sole claim of
the 670 patent is unpatentable under 103.

43

B.

Ground 2: The Claim Would Have Been Rendered Obvious

Under 103 by the Johns Manville the Worldwide Leader in
Thermal and Acoustical Equipment Insulations for OEM
Applications Brochure (Ex. 1005) in View of Either
Soundproofing Your Walls, The Family Handyman Magazine (Ex.
1008) or Owens Corning 2006 at a Glance Report (Ex. 1010)

Johns Manville the Worldwide Leader in Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure (JM 2000 Brochure)
(Ex. 1005), considered in combination with either Soundproofing or the OC 2006
Report, renders the 670 patent design obvious under 35 U.S.C. 103.
The JM 2000 Brochure is a printed advertising brochure published in
October 2000 many years prior to the filing date of the 670 patent. Ex. 1005 at
10; see also Mota Decl at 3 (Ex. 1017); Mullendore Decl. at 6 (Ex. 1003).
Therefore, the JM 2000 Brochure is a prior-art printed publication under 102(b).
Below is a visual comparison between the 670 patent claim and an image excerpt
from the JM 2000 Brochure:

44

Jackson 670

JM 2000 Brochure

Comparing the two images, it is clear that they have basically the same
design characteristics, such that they are substantially similar. See Durling, 101
F.3d at 103 (Before one can begin to combine prior art designs, however, one
45

must find a single reference, a something in existence, the design characteristics of

which are basically the same as the claimed design.) (citation omitted)
1.

Elements 1-3

First, both of the designs comprise (1) insulation material with (2) a cloudlike appearance, and (3) variations in a swirl pattern. See Bide Decl. at 49 (Ex.
1013).
2.

Alleged Element 4

As with the JM 1997 Brochure (Ex. 1004), given that a waffle pattern
inevitably is present in insulation products of the type depicted in the prior art
references cited in this Petition, it is no surprise that the alleged waffle pattern
element of the 670 patent claim also is visible in the JM 2000 Brochure.
Specifically, the waffle pattern can be seen in the below magnified section of the
JM 2000 Brochure image, where there is a geometric pattern imprinted on the
surface of the cured fiberglass product. See id. at 24, 38.

46

3.

Element 5

Based on a simple visual assessment, the JM 2000 Brochure shows some

degree of variation in hues, so the only potential issue is one of sufficiency. To
the extent the Board finds that the variation of distinct hues in the JM 2000
Brochure does not sufficiently disclose this element of the 670 patent claim, 6 it
would have been obvious to modify the variation of distinct hues in the JM 2000
6

Alternatively, should the Board find that the JM 2000 Brochure discloses a

variation of distinct hues based on a simple visual assessment, the Board should
find the sole 670 patent claim unpatentable under 35 U.S.C. 102(b).
47

Brochure in light of either Soundproofing (Ex. 1008) or the OC 2006 Report (Ex.
1010) each of which show nearly identical insulation with an even greater
variation of distinct hues than that shown in the 670 patent image.
Using the framework for obviousness described above in Section VIII,
supra, the primary JM 2000 Brochure reference has basically the same design
characteristics as the claimed 670 patent design, thus satisfying the first
requirement for obviousness. Durling, 101 F.3d at 103 (citation omitted).
Moreover, to the extent that the Board finds that the variation of distinct hues in
the JM 2000 Brochure does not satisfy this claim element based on a simple visual
comparison, Soundproofing and the OC 2006 Report each contains a variation of
distinct hues even greater than the 670 patent design as described previously (see
Section IX.A.3(b), supra).
Thus, viewing the JM 2000 Brochure in light of either Soundproofing or the
OC 2006 Report yields a design that has substantially the same overall visual
appearance as the claimed design of the 670 patent. Specifically, such a
combination would be obvious because the JM 2000 Brochure and both
Soundproofing and the OC 2006 Report are so related that the appearance of
certain ornamental features in one would suggest the application of those features
to the other. In re Borden, 90 F.3d at 1575 (citations omitted). In particular, the
JM 2000 Brochure and both Soundproofing and the OC 2006 Report are highly
48

related in appearance because they each depict ordinary insulation products with a
cloud-like appearance and a variation in swirl pattern. Moreover, as discussed
previously (see Section IX.A.2(a), supra), the insulation products depicted in each
reference, either explicitly or inherently, would have a waffle pattern on its
surface. In addition, these products are manufactured by companies that directly
compete in the insulation industry. See Granger Decl. at 2 (Ex. 1015). In fact,
the JM 2000 Brochure already shows some amount of hue variation. So to the
extent a variation of hues of a magnitude greater than or equal to that shown in the
670 patent is required to meet this last claim limitation, modifying the JM 2000
Brochure in light of the variation of distinct hues in either Soundproofing or the
OC 2006 Report would create a hypothetical reference that has an overall
appearance that is identical to that of the 670 patent design. See Durling, 101
F.3d at 103. Hence, using a greater variation of distinct hues would have been
an obvious modification to the JM 2000 Brochure.
4.

Even If Brown and Cream Constitute a Claim Element,

the Claim Would Have Been Rendered Obvious Under
103

Even if brown and cream together are considered to be a color element of

the claimed design of the 670 patent (and they should not be), then the sole claim
is still rendered obvious by the JM 2000 Brochure (Ex. 1005), either alone or in
combination with Soundproofing or the OC 2006 Report. Specifically, the 670
49

patent is rendered obvious because the JM 2000 Brochure (i) possesses or, in
combination with Soundproofing or the OC 2006 Report, renders obvious all the
other elements of the claim for the reasons discussed previously (see Section
IX.B.1-3, supra); and (ii) itself possesses a color scheme that mirrors the brown
and cream color scheme depicted in the 670 patent claim. Based on these
similarities, a designer of ordinary skill familiar with the relevant prior art (see,
e.g., Exs. 1004-1011) would believe that, taken as a whole, the JM 2000 Brochure
is substantially the same design as the claimed design. See Durling, 101 F.3d at
103. Therefore, the 670 patents claim is rendered obvious by this reference. See
id. As such, the sole claim of the 670 patent is not patentable over the JM 2000
Brochure, even if the colors brown and cream together are improperly considered a
color claim element.
5.

JM 2000 Brochure Conclusion

Based on the above similarities, and for the reasons stated, the JM 2000
Brochure contains all of the actual claim elements of the 670 patent claim;
however, to the extent it does not sufficiently disclose the variation of distinct
hues element of the 670 patent claim, then in combination with either
Soundproofing or the OC 2006 Report, the JM 2000 Brochure renders the 670
patent obvious under 103. Therefore, the Board should find that the sole claim of
the 670 patent is unpatentable under 103.
50

C.

Ground 3: Based Upon the Patent Owners Claim Construction,

the Claim of the 670 Patent Is Unpatentable Under 102 In View
of Johns Manville Thermal and Acoustical Equipment Insulations
for OEM Applications Brochure (Ex. 1004)

As disclosed above, this is the second IPR filed by JM challenging the 670
patent. In connection with the first IPR (Case IPR2015-01453), on October 13,
2015, the Patent Owners submitted Paper No. 10, a Preliminary Response to JMs
Petition (the Response) (Ex. 1020). In the Response, the Patent Owners take the
position that [t]he actual ordinary meaning of hue is color. Response at 12
(Ex. 1020). The Patent Owners also assert that brown and cream are colors that
form a necessary and integral part of the claimed design and form one of the
ornamental aspects of the claimed design. Id. at 11-12. Further, in the Response,
the Patent Owners reject JMs claim construction analysis and assert that [t]his
concocted list of elements ignores the overall appearance of the claimed design
(id. at 6), which is simply brown and cream color insulation.
JM disagrees with the Patent Owners simplistic and grossly incomplete
claim construction, but for the purposes of this alternate ground of this Petition,
accept the Patent Owners construction that the claimed design is simply brown
and cream color insulation as shown in the drawing of the 670 patent. Using that
construction, the JM 1997 Brochure (Ex. 1004) anticipates the single claim of the
670 patent. The JM 1997 Brochure shows brown and cream color insulation as
shown in the drawing of the 670 patent. Any ordinary observer can confirm this.
51

Accordingly, under the Patent Owners claim construction, the 670 patent is
unpatentable under 102 in view of the JM 1997 Brochure.
D.

Ground 4: Based Upon the Patent Owners Claim Construction,

the Claim of the 670 Patent Is Unpatentable Under 102 In View
of Johns Manville The Worldwide Leader in Thermal and
Acoustical Equipment Insulations for OEM Applications
Brochure (Ex. 1005)

As just mentioned, this is the second IPR filed by JM challenging the 670
patent. In connection with the first IPR (Case IPR2015-01453), on October 13,
2015, the Patent Owners submitted the Response (Ex. 1020). In the Response, the
Patent Owners take the position that [t]he actual ordinary meaning of hue is
color. Response at 12 (Ex. 1020). The Patent Owners also assert that brown
and cream are colors that form a necessary and integral part of the claimed
design and form one of the ornamental aspects of the claimed design. Id. at 1112. Further, in the Response, the Patent Owners reject JMs claim construction
analysis and assert that [t]his concocted list of elements ignores the overall
appearance of the claimed design (id. at 6), which is simply brown and cream
color insulation.
Again, JM disagrees with the Patent Owners claim construction, but for the
purposes of this alternative ground, accept the Patent Owners construction that the
claimed design is simply brown and cream color insulation as shown in the
drawing of the 670 patent. Using that construction, the JM 2000 Brochure (Ex.
52

1005) anticipates the single claim of the 670 patent. The JM 2000 Brochure
shows brown and cream color insulation as shown in the drawing of the 670
patent. Any ordinary observer can confirm this. Accordingly, under the Patent
Owners claim construction, the 670 patent is unpatentable under 102 in view of
the JM 2000 Brochure.
X.

CONCLUSION
For the reasons set forth in the grounds above, the sole claim of the 670

patent is obvious under 103 or, in the alternative, anticipated under 102. As a
result, this Board should institute inter partes review and find the sole claim of the
670 patent unpatentable.

Respectfully submitted,

By: /s/ Kristopher L. Reed

Kristopher L. Reed
Registration No. 58,694
Lead Counsel for Petitioners

53

Appendix List of Exhibits

Exhibit
No.

Description

Ex. 1001

U.S. Design Patent No. D631,670 to Jackson

Ex. 1002

Prosecution History of U.S. Design Patent No. D631,670 to Jackson

Ex. 1003

Declaration of Laura K. Mullendore

Ex. 1004

Johns Manville Thermal and Acoustical Equipment Insulations for

OEM Applications Brochure

Ex. 1005

Johns Manville The Worldwide Leader in Thermal and Acoustical

Equipment Insulations for OEM Applications Brochure

Ex. 1006

Owens Corning PROPINK Smartperm Vapor Retarder

Ex. 1007

Johns Manville SG Series Spin-Glas & Range Spin Glas Brochure

Ex. 1008

Soundproofing Your Walls, The Family Handyman Magazine

Ex. 1009

Knauf: Timber Frame External Walls: Non-Residential Brochure

Ex. 1010

Owens Corning 2006 At A Glance Report

Ex. 1011

Owens Corning 2007 Progress Report

Ex. 1012

U.S. Patent No. 4,734,996 to Kim et al.

Ex. 1013

Declaration of Dr. Martin Bide

Ex. 1014

Curriculum Vitae of Dr. Martin J. Bide

Ex. 1015

Declaration of Mark A. Granger

Ex. 1016

Declaration of Teresa K. OBrien

Ex. 1017

Declaration of Joe Mota

Ex. 1018

Declaration of Anne N. Barker

54

Ex. 1019

Declaration of Michael Fay

Ex. 1020

US PTAB, Case IPR2015-01453, Paper No. 10, Patent Owners

Preliminary Response to Petition for Inter Parties Review of U.S.
Patent No. D631,670 Under 35 U.S.C. 311-319 and 37 C.F.R.
42.100 et seq. (October 13, 2015)

55

CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105(a), I, Kristopher L. Reed,
certify that on November 2, 2015, a true and correct copy of the foregoing
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
D631,670 (and accompanying Exhibits 1001-1020) was served upon the belowlisted counsel by Express Mail:

Daniel J. Lueders
Spiro Bereveskos
WOODARD, EMHARDT, MORIARTY,
MCNETT & HENRY LLP
111 Monument Circle, Suite 3700
Indianapolis, Indiana 46204-5137
D. Rusty Denton
BINGHAM GREENEBAUM DOLL LLP
2700 Market Tower
10 West Market Street
Indianapolis, Indiana 46204
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W., Suite 800
Washington, DC 20005

Date: November 2, 2015

By: s/ Kristopher Reed

Kristopher L. Reed
Registration No. 58,694
Lead Counsel for Petitioners
KILPATRICK TOWNSEND &
STOCKTON LLP

56