Ceva Animal Health Inc.

Patent Trials and Appeals Board

May 26, 2020

IPR2020-00039 (P.T.A.B. May. 26, 2020)

Trials@uspto.gov Paper 23
571-272-7822 Entered: May 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CLEARH2O, INC.,
Petitioner,
v.

CEVA ANIMAL HEALTH INC.,
Patent Owner.

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Patent 8,794,185 B2

Before JAMES A. WORTH, MICHAEL L. WOODS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
WOODS, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of Decision Denying Institution
37 C.F.R. § 42.71

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I. INTRODUCTION
A. Background
ClearH2O, Inc., (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–15 of U.S. Patent No. 8,794,185
B2 (Ex. 1001, “the ’185 patent”). Pet. 2. We issued a decision denying
institution, exercising our discretion under 35 U.S.C. § 325(d). Paper 21
(“Decision” or “Dec.”).
Petitioner filed a timely Request for Rehearing in which it asks that
we modify our Decision and institute review of the challenged claims. Paper
22 (“Reh’g Req.” or “Request”).
For the reasons that follow, we deny Petitioner’s Request to modify
our Decision.

B. References Relied Upon
Petitioner’s challenges rely on the following references (Pet. 4):
Name Reference Ex. No.
Lewis US Pub. No. 2002/0104485 A1, published Aug. 8,
2002
Ex. 1003
Goff U.S. Pat. No. 883,132, issued Mar. 24, 1908 Ex. 1004
Lee WO 99/08704, published Feb. 25, 1999 Ex. 1005
Lopez U.S. Pat. No. 5,474,102, issued Dec. 12, 1995 Ex. 1006
Johnston U.S. Pat. No. 6,910,446 B2, issued June 28, 2005 Ex. 1007

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C. Asserted Grounds
Petitioner contends that claims 1–15 of the ’185 patent are
unpatentable under the following grounds:
References Basis Claims
Lewis, Goff § 103(a)1 1, 2, 9, 12–15
Lewis, Goff, Lee § 103(a) 3–6, 8, 11
Lewis, Goff, Lopez § 103(a) 7, 10
Johnston, Lee § 103(a) 1–6, 8, 9, 11–15
Johnston, Lee, Lopez § 103(a) 7, 10
Pet. 4.

D. Standard for Reconsideration
The party filing a request for rehearing of a decision not to institute
trial has the burden of showing a decision should be modified, and the
request for rehearing must specifically identify all matters the party believes
the Board misapprehended or overlooked and the place where each matter
was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore,
Petitioner bears the burden of establishing that we misapprehended or
overlooked the matters that it requests that we review.

II. ANALYSIS
A. Decision Denying Institution
In our Decision, we summarized relevant portions of the prosecution
history. See Dec. 6–10. We noted that the patent examiner rejected the

1 Because the challenged claims of the ’185 patent have an effective filing
date before the effective date of the applicable AIA amendment, we refer to
the pre-AIA version of 35 U.S.C. § 103.
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claims at least six times, relying primarily on Johnston in one office action
(id. at 6–7) and relying primarily on Lewis in five other office actions (id. at
7–10).
The examiner ultimately allowed the claims, stating that
the prior art of record fails to show or render obvious the
limitations: a manifold nozzle head wherein the plurality of
nozzle openings on the manifold nozzle head approximately
spans the length or width of a hatchling tray, dispensing the
predetermined volume of the soft gel as small beadlets onto the
hatchlings in the hatchling tray at approximately a constant rate,
passing the hatchling tray beneath the nozzle openings for even
distribution of the beadlets to the hatchlings contained therein,
and allowing the hatchlings to consume the beadlets, of the
method of claim 1.
Ex. 2001, 677.

B. Petitioner’s Request and the Critical Third Limitation
In its Request, Petitioner argues that the Board erred in two manners.
First, Petitioner argues that “the Board improperly considered [Goff]
to be cumulative.” Reh’g Req. 2. Petitioner contends that “the Decision
fails to consider the critical element, the Third Limitation, and how the
newly introduced references are not cumulative to the Third Limitation.” Id.
at 7 (emphasis added).
Second, Petitioner argues that we improperly considered the Becton,
Dickinson factors. Id. at 8. In particular, Petitioner argues that our analysis
failed to consider that the Third Limitation captures differences taught by
Johnston and Goff, and not the other cited art. See id. at 10 (“The difference
between the claim that were not allowed over Lewis, Peterson and Kurtz and
the claims that were allowed is minor, and those minor differences are
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captured by the Third Limitation and taught by Johnston and, alternatively,
Goff.”).
As summarized above, Petitioner focuses its arguments on the so-
called “Third Limitation,” which recites, “Passing the hatchling tray beneath
the nozzle openings for even distribution of the beadlets to the hatchlings
contained therein.” Id. at 3.
We address each of Petitioner’s contentions separately, below.

C. Improperly Considered Goff to be Cumulative
The issue is whether we misapprehended or overlooked Goff in our
original determination that Goff was cumulative to the art evaluated during
prosecution. Petitioner argues, “Unlike Bartlett, Lewis, Peterson, and Kurtz,
Goff discloses the critical Third Limitation, which was not considered or
addressed in the Decision. Goff is thus not cumulative to the references
considered during prosecution.” Reh’g Req. 7.
We disagree for the following two reasons.
First, the Petition does not rely on Goff for disclosing the Third
Limitation. Rather, the Petition relies on Lewis for disclosing the Third
Limitation. Pet. 24 (Limitation 1.6). In addressing the Third Limitation, the
Petition provides in its entirety:
Lewis states that “The gel is sprayed over the top of the
chicks in a uniform fashion to better ensure uniform distribution
of the gel.” As shown in FIG. 1 of Lewis, the tray 14 is located
beneath nozzle 18 so that the drops of gel 28 (i.e., beadlets) are
distributed onto the hatchlings.
Id. (citing Ex. 1003 ¶ 11). The Petition makes no reference to Goff in
addressing the Third Limitation, so we do not agree with Petitioner’s
assertion that we failed to properly consider Goff in addressing this
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limitation. See Reh’g Req. 7 (“Goff discloses the critical Third Limitation,
which was not considered or addressed in the Decision.”).
Second, and as explained in our Decision, Petitioner’s reliance on
Goff is strikingly similar to the examiner’s reliance on Bartlett, Kurtz, and
Peterson. See Dec. 26, 28. During prosecution, the examiner relied on
Lewis for disclosing a majority of the claimed limitations, and relied on
Bartlett, Kurtz, and Peterson for teaching nozzles “of approximately uniform
size arranged approximately evenly apart along a manifold.” See id. at 26
(citing Ex. 2001, 149, 317, 358, 409); see also id. at 7–10 (summarizing
office actions dated July 30, 2010, October 15, 2010, February 24, 2011, and
June 21, 2011, and January 4, 2012). In the Petition, Petitioner also relied
primarily on Lewis, relying on Goff for “describ[ing] an apparatus for
spraying animals that includes spray nozzles 18 evenly spaced along a linear
manifold (top member 16).” Pet. 22 (citing Ex. 1004, 1:72–105, 2:20–58,
Fig. 1); see also id. at 18–24 (relying primarily on Lewis in challenging
claim 1). Petitioner does not persuade us that we misapprehended or
overlooked anything in our determination that Goff is cumulative to the art
cited during prosecution, namely, Bartlett, Kurtz, and Peterson. See Dec. 26.
Accordingly, Petitioner’s first argument is unavailing.

D. Incorrectly Considered Becton, Dickinson Factors
The issue is whether we erred in applying the Becton, Dickinson
factors. Petitioner contends that, as to the Third Limitation, Goff and
Johnston “contain material differences over the references being actively
considered at the time claim 1 was allowed.” See Reh’g Req. 9; see also id.
at 13, 15. Petitioner argues that “Johnston was only considered by the
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examiner in April 2009, more than 5 years before the Third Limitation was
added to claim 1.” Id. at 9; see also id. at 10.
Petitioner’s argument is not persuasive.
As to Goff, and as discussed above (supra Part II.C), Petitioner did
not rely on Goff for addressing the Third Limitation, so we fail to see how
we overlooked or misapprehended Goff in applying the Becton, Dickinson
factors in consideration of this limitation.
Turning to Johnston, Petitioner’s argument implies that the examiner
erred by overlooking Johnston because more than five years elapsed
between the office action applying Johnston (Ex. 2001, 81–96 (Office
Action entered April 28, 2009)) and the relevant claim amendment (id. at
657–663 (Amendment entered June 4, 2014)). See Reh’g Req. 9.
This argument, however, is untimely as it was not presented in the
Petition. A Request for Rehearing is not an opportunity to present new
arguments and evidence. 37 C.F.R. § 42.71(d) (A request for rehearing
“must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed.”).
In the Petition’s statement as to why we should institute review
despite the similarities with the prosecution history, Petitioner only argues,
Goff, Lee, and Lopez were not considered by the
Examiner during prosecution of the ‘185 patent. While Lewis
and Johnston were made of record during prosecution of the
‘185 patent, the Examiner did not consider either reference in
combination with the other presently identified prior art
references. Each ground of rejection presented herein therefore
includes one or more prior art references that were not
considered during examination.
Pet. 5.
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Because the Petition did not argue that the examiner erred in
overlooking Johnston, such as by forgetting Johnston, Petitioner’s argument
in the Request is untimely. See 37 C.F.R. § 42.71(d)
For the foregoing reasons, Petitioner’s second argument is also
unavailing.

III. OUTCOME OF DECISION ON REHEARING

IV. CONCLUSION
For the reasons given, Petitioner’s Request for Rehearing is denied.

Claims 35 U.S.C. § References Denied Granted
1, 2, 9, 12–15 § 103(a) Lewis, Goff 1, 2, 9, 12–15
3–6, 8, 11 § 103(a) Lewis, Goff, Lee 3–6, 8, 11
7, 10 § 103(a) Lewis, Goff,
Lopez
7, 10
1–6, 8, 9, 11–
15
§ 103(a) Johnston, Lee 1–6, 8, 9, 11–
15
7, 10 § 103(a) Johnston, Lee,
Lopez
7, 10
Overall Outcome 1–15
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For PETITIONER:

Todd A. Sullivan
Rebecca C. Christon
HAYES SOLOWAY PC
tsullivan@hayes-soloway.com
rchriston@hayes-soloway.com

For PATENT OWNER:

Andrew M. Ollis
Tia D. Fenton
Philippe Signore
Lisa Mandrusiak
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
cpdocketollis@oblon.com
cpdocketfenton@oblon.com
cpdocketsignore@oblon.com
cpdocketmandrusiak@oblon.com

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