Ex Parte Elmer

Patent Trials and Appeals Board

Jun 23, 2017

14300282 - (J) (P.T.A.B. Jun. 23, 2017)

BoxInterferences@uspto.gov Filed: June 23, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM
(Preston S. Wilson, Kevin M. Lee, and Mark S. Wochner, Inventors)

Junior Party
(Patent 8,689,935),

v.

KARL-HEINZ ELMER, Inventor

Senior Party
(Patent Application 14/300,282).

Patent Interference No. 106,062 (DK)
(Technology Center 2800)

Judgment
37 C.F.R. §§ 41.127 and 41.204(a)(3)

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH
KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
Interference 106,062

-2-
Following the Decision on Motions (Paper 69) judgment under 35 U.S.C.
§ 135(a)1 is entered against Junior Party Texas. Texas asserted a conception on
29 April 2009 and a date of “first experiment demonstrating the invention” on
14 May 2009 in its Priority Statement. (See Paper 22.) Because both of these
dates are later than the filing date of Elmer’s German application, 3 April 2008,
which was accorded to Elmer by the grant of its Motion 1, we determine that Texas
cannot prevail on a showing of priority.
Therefore, it is ORDERED that Texas patent 8,689,935 claims 1-14 be
CANCELED.
FURTHER ORDERED that a copy of this judgment shall be entered into the
administrative record of patent 8,689,935, application 14/300,282.
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c)
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and
FURTHER ORDERED that a party seeking judicial review timely serve
notice on the Director of the United States Patent and Trademark Office; 37 C.F.R.
§§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57
(Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for
interference proceedings declared after September 15, 2012).

1 Patent interferences continue under the relevant statutes in effect on
15 March 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference 106,062

-3-

cc (via e-mail):

Counsel for Junior Party Texas

Mark R. DeLuca
Ryan T. Beard
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, PC
mdeluca@intprop.com
rbeard@intprop.com

Counsel for Senior Party Elmer

Wesley O. Mueller
Thomas P. Canty
Elias P. Soupos
LEYDIG, VOIT & MAYER, LTD.
wmueller@leydig.com
tcanty@leydig.com
esoupos@leydig.com

BoxInterferences@uspto.gov Filed: June 23, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM
(Preston S. Wilson, Kevin M. Lee, and Mark S. Wochner, Inventors)

Junior Party
(Patent 8,689,935),

v.

KARL-HEINZ ELMER, Inventor

Senior Party
(Patent Application 14/300,282).

Patent Interference No. 106,062 (DK)

DECISION ON MOTIONS
37 C.F.R. § 41.125(a)

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH
KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

Interference 106,062
2

I. Introduction
This interference was declared after an initial determination that the claims
of patent 8,689,935 (“the ’935 patent”), assigned to the Board of Regents of the
University of Texas System (“Texas”) and the claims of application 14/300,282
(“the ’282 application”), owned by Karl-Heinz Elmer (“Elmer”) interfere. (See
Decl., Paper 1.)
A. Subject matter
According to the parties’ specifications, underwater noise, for example from
drilling and pile driving activities, can be harmful to migratory marine animals.
(’935 patent”, Exh. 2001, at 1:18-20; ’282 appl., Exh. 2002, at ¶ 3.) In the past,
curtains of air bubbles were used to block sound waves to address this problem.
Air bubbles, though, require power and create noise to generate. (See ’935 patent,
Exh. 2001, at 1:33-42; see ’282 appl., Exh. 2002, at ¶¶ 11-13.) The parties both
claim apparatuses that use multiple gas-filled containers arranged on an apparatus
as a way to block underwater sounds instead of air bubbles. (See [Texas] Clean
Copy of Claims, Paper 13, and Elmer Clean Copy of Claims, Paper 5.)
The specific subject matter of the Interference is defined by the Count,
which recites:
An apparatus that reduces the decibel level of underwater
sounds emanating from an underwater device comprising:
a support positionable proximate to the underwater device,
wherein the support comprises a plurality of rigid support members;
and
a plurality of gas-filled containers coupled to the support,
wherein each of the plurality of gas-filled containers comprises a
flexible membrane filled with a gas, and
wherein the plurality of gas-filled containers are connected to
the plurality of rigid support members such that at least some of the
plurality of gas-filled containers are in contact with one or more of the
plurality of rigid support members, and wherein when deployed
Interference 106,062
3

proximate to the underwater device, the rigid support members
prevent vertical movement of the plurality of gas-filled containers;
wherein the gas-filled containers include gas-filled bodies each
of which has a physical characteristic that confers a selected
resonance frequency to each of the gas-filled bodies upon immersion
into the water surrounding the underwater device; and
wherein the gas-filled containers create a void fraction for the
device such that a preselected noise reduction is achieved.

(Decl., Paper 1, at 4.)
B. Motions
Three motions are before us in this phase of the interference.1
Texas Motion 1 argues that the interference should be terminated because
there is no interference-in-fact. (See Paper 23.) We deny this motion.
Texas Motion 2 argues that Elmer’s claims are unpatentable under 35 U.S.C.
§ 112, first paragraph. (See Paper 24.) We deny this motion.
Elmer Motion 1 argues that Elmer should be accorded benefit of its prior
German application as a constructive reduction to practice of the Count. (See
Paper 32.) We grant this motion.

II. Texas Motion 1 – No Interference in Fact
“Whenever an application is made for a patent which, in the opinion of the
Director, would interfere with any pending application, or with any unexpired
patent, an interference may be declared . . . .” 35 U.S.C. § 135(a)2. Because the

1 The parties both requested oral argument. (See Papers 67 and 68.) After
reviewing the briefs filed, we determine that no oral argument is necessary.
Accordingly, as is our discretion, none was scheduled. See 37 C.F.R. § 41.124
(“(c) If a request for oral argument is granted . . . .”).
2 Interferences continue under the statutes that were in effect on March 15, 2013.
See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference 106,062
4

interference was declared by an administrative patent judge acting on behalf of the
Director, 37 C.F.R. § 41.203(b), there is presumption that at least one claim of
each party interferes. To prevail, Texas bears the burden of showing that the
parties do not claim the same subject matter. See 37 C.F.R. §§ 41.121(b) and
41.208(b).
Whether an interference occurs is determined by comparing the parties’
claims. See Noelle v. Lederman, 355 F.3d 1343, 1352 (Fed. Cir. 2004).
Specifically, we determine interference under a “two-way test” wherein “the
subject matter of a claim of one party would, if prior art, have anticipated or
rendered obvious the subject matter of a claim of the opposing party and vice
versa.” 37 C.F.R. §41.203(a). See Eli Lilly & Co. v. Bd. of Regents of Univ. of
Wash., 334 F.3d 1264, 1270 (Fed. Cir. 2003). Thus, Texas must present sufficient
argument, supported by evidence, to persuade us that either none of the Texas
claims would anticipate or render obvious any Elmer claims or that none of
Elmer’s claims would anticipate or render obvious any Texas claims.
Texas’s burden is a negative one: to show that the subject matter claimed by
each party is not obvious over the other. One of the ways Texas could satisfy this
burden is with testimony from a knowledgeable witness. (See Standing Order
¶ 208.1.) Texas did not rely on testimony. We evaluate Texas’s arguments based
on the evidence it does cite.
A. Vertical and horizontal movement
Texas argues that Elmer’s claims lack certain limitations present in the
Texas claims. (See Texas Motion 1, Paper 23, at 1:10-153.) First, Texas argues its
own claims 1, 12, and 13 require that “the rigid support members prevent vertical

3 The line numbers provided in Texas’s briefs begin with line 5, not 1. We cite to
the line numbers as they appear in the brief.
Interference 106,062
5

and horizontal movement of the plurality of gas-filled containers” while Elmer’s
claims require “the rigid support members prevent vertical movement of the
plurality of gas-filled containers . . . .” (See Texas Motion 1, Paper 23, at 7:16-
8:6.)
According to Texas it would not have been obvious to include a rigid
support that prevents horizontal, as well as vertical, movement in Elmer’s claimed
apparatus because the Elmer specification teaches allowing the envelope bodies to
“move freely horizontally, at least to a limited extent,” so as to not be an obstacle
for fish or other marine life. (See id. at 8:6-21, citing Elmer appl., Exh. 2002, at
¶ 19.) According to Texas, this portion of the Elmer application teaches away
from an apparatus with a rigid support that prevents horizontal movement. Texas
argues further that its claims and the Elmer claims are different, citing Figure 4 of
the Elmer specification and Figure 5A of the Texas patent. (See id. at 8:22-10:7.)
We are not persuaded by this argument because even if the parties’ claims
are different, if the claims of each party would have been obvious over each other
they interfere. See Aelony v. Arni, 547 F.2d 566, 569–70 (C.C.P.A. 1977) (holding
that even though the two sets of claims were mutually exclusive, they were
patentably indistinct, and hence there was an interference in fact). Therefore, even
if Elmer’s written disclosure explains benefits of movement in the horizontal
direction, the claims interfere if it would have been obvious to prevent such
movement. Texas fails to direct us to persuasive evidence that addresses
obviousness, such as the testimony of one skilled in the art.
We are also not persuaded that by describing a benefit of horizontal
movement, the Elmer specification teaches away from an embodiment where the
rigid support members prevent such movement. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led in a
Interference 106,062
6

direction divergent from the path that was taken by the applicant.” In re Gurley,
27 F3d 551, 553 (Fed. Cir. 1994). Teaching an advantage of a claimed invention
does not necessarily discourage one from a different path.
Texas argues further that its claimed configurations provide a better effect,
wherein “[b]y connecting gas-filled bodies to the support, the position of the gas-
filled bodies is fixed, ensuring more consistent sound-dampening effects since the
gas-filled bodies do not move due to water currents.” (Texas Motion 1, Paper 23,
at 6:16-18, citing ’935 patent, Ex. 2001, at 2:10-11, and 10:47-50.) Again, even
though there may be differences or advantages to the Texas apparatus, we are not
persuaded without evidence showing these differences or advantages would not
have been obvious.
Texas argues that during prosecution the examiner allowed its claims only
after adding a limitation to rigid support members that inhibit vertical and
horizontal movement of the plurality of gas-filled containers. (See id. at 10:8-27,
citing Amendment in appl. 13/453,720, dated 10 May 2013, Exh. 2004, at 2.)
Texas cites the examiner’s reasons for allowance, wherein “the prior art [including
a parent of the involved Elmer application] fails to disclose the invention in the
combination as required.” (Id. at 10:19-21, citing Notice of Allowance in appl.
13/453,720, dated 30 May 2013, Exh. 2005, at 7.)
We are not persuaded that the prosecution of the Texas claims is
determinative of the obviousness of the currently involved Elmer claims. The
examiner rejected the Texas claims over the specification of a parent to the current
Elmer specification (application publication 2011/0031062, which corresponds to
application 12/936,235), not an application with the current Elmer claims. The
examiner was not evaluating the relationship between the claims of the involved
Elmer ’282 application and the involved Texas claims. The examiner’s short
Interference 106,062
7

statement regarding patentability of the Texas claims, without more explanation,
does not persuade us that the parties’ claims do not interfere.
After evaluating the parties’ arguments and evidence, we are not persuaded
that there is no interference-in-fact because the Texas claims require preventing
vertical and horizontal movement of the gas-filled containers and the Elmer claims
only require preventing vertical movement.
B. Toroidal shape
Although our determination that Texas has failed to show no interference-in-
fact between its claims 1, 12, and 13 and Elmer claim 1 is sufficient to deny Texas
Motion 1, we exercise our discretion to review Texas’s arguments regarding its
claim 14. (See Texas Motion 1, Paper 23, at 11:9-12:19.)
Texas claim 14 includes the limitation “wherein one or more of the plurality
of gas-filled containers have a toroidal shape, and wherein the central portion of
the toroidal gas-filled containers is open such that, during use, water passes
through the center of the toroidal gas-filled containers . . . .” ([Texas] Clean Copy
of Claims, Paper 13.) Texas argues that although Elmer claim 9 recites gas-filled
containers that are “round,” round is different from toroid. (Texas Motion 1, Paper
23, at 11:12-17.) Texas argues that the Elmer application discloses only bubble-
shaped envelopes, which are not toroid-shaped. (See id. at 11:18-12:9.)
Again, we are not persuaded by this argument because Texas argues only
about the differences between the parties’ claims, not that they would have been
unobvious. That is, Texas does not direct us to persuasive evidence that one of
ordinary skill in the art would have considered toroid-shaped containers to have
been unobvious over round containers.
Texas argues: “The Texas inventors found that improved sound-dampening
effects can be used by using toroidal gas-filled containers, instead of spherical
bubbles (such as produced by a bubble cloud generator).” (Texas Motion 1, Paper
Interference 106,062
8

23, at 12:13-15.) Even if this statement is supported by evidence, it is not
persuasive because an improvement may still be obvious.
Accordingly, we are not persuaded that there is not interference-in-fact
between Texas claim 14 and Elmer claim 1.
C. Dependent claim limitations
Texas argues that its dependent claims 2-7 and 9 do not interfere with
Elmer’s claims. (See Texas Motion 1, Paper 23, at 12:23-14:11.) Because we are
not persuaded there is no interference between Texas claims 1, 12, 13, and 14 and
Elmer claim 1, we need not consider these arguments. See 37 C.F.R. § 41.203(a)
(“An interference exists if the subject matter of a claim of one party would, if prior
art, have anticipated or rendered obvious the subject matter of a claim of the
opposing party and vice versa.” (emphasis added).)
D. Conclusion
Based on our decision regarding Texas claims 1, 12, 13, and 14 and Elmer
claim 1, we deny Texas Motion 1.

III. Texas Motion 2 – Unpatentability under 35 U.S.C. § 112
The test for written description under 35 U.S.C. § 112, first paragraph, “is
whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as
of the filing date.” Ariad Pharm., Inc., v. Eli Lilly & Co., 598 F3d 1336, 1351
(Fed. Cir. 2010). The test for enablement is whether one of ordinary skill in the art
would have been able to make and use the full scope of the invention without
undue experimentation. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).
Texas argues that the Elmer application fails to provide either a sufficient
written or enabling description of every element of the claimed invention.
Interference 106,062
9

A. Gas-filled containers “in contact with” rigid support members
Texas argues that Elmer independent claims 1 and 7 are unpatentable under
35 U.S.C. § 112, first paragraph, because the Elmer specification does not describe
gas-filled containers in contact with a rigid support member. Elmer claim 1 recites
an apparatus that includes the limitation:
wherein the plurality of gas-filled containers are connected to the
plurality of rigid support members such that at least some of the
plurality of gas-filled containers are in contact with one or more of the
plurality of rigid support members . . . .

(Elmer Clean Copy of Claims, Paper 5.)
Texas argues that the portions of its specification cited by Elmer as support
for this limitation, specifically paragraphs 17 and 37, do not provide sufficient
written description. (See Texas Motion 2, Paper 24, at 7:9-8:2, citing Suggestion
of Interference, Exh. 2003, App’x C, at 1.) Elmer does not argue in its Opposition
that these paragraphs describe “gas-filled containers [that] are in contact with one
or more of the plurality of rigid support members,” as claimed.
Texas relies on statements made by the examiner during prosecution of its
own application to argue that the Elmer specification does not describe gas-filled
containers in contact with rigid support members. (See Texas Motion 2, Paper 24,
at 8:13-9:12.) According to the examiner,
the prior art, including the closest prior art, Elmer US20110031062)
discloses a rigid support structure which includes a plurality of gas
filled containers, however the prior art does not disclose wherein any
of the gas filled containers are in contact with the rigid structure and
wherein the gas filled containers are prevented from moving. Elmer
discloses the gas filled containers being attached to the structure, by
means of carrier elements and teaches away from the direct
attachment (paragraph 0034).

Interference 106,062
10

(Corrected Notice of Allowability in application 13/453,720, mailed 16 September
2013, Exh. 2006, at 3.)
Texas also cites to the Notice of Allowability mailed a month later, which
provides a similar statement, adding that “Elmer further discloses a plurality of gas
filled containers attached directly to the pile being driven. Elmer does not disclose
the direct attachment to a rigid support structure, formed of a plurality of rigid
support members, that is proximate the sound source.” (Notice of Allowability
mailed 10 October 2013, Exh. 2007, at 5.)
The examiner’s statements, without more, do not persuade us that Elmer’s
claims lack written description. We note that Elmer’s claims were not rejected for
lack of written description when they were examined. Because the examiner’s
statement in the Texas notices were made during ex parte prosecution, without an
opportunity for Elmer to respond, we consider Elmer’s opposition to Texas’s
arguments in this proceeding, before determining the weight to accord the
examiner’s statements in prosecution.
Elmer argues that its specification describes a construction of the gas-filled
containers (envelope bodies) as integral to the carrier element, wherein:
It is particularly advantageous that the envelope body is a part of the
carrier element and/or the envelope bodies and the carrier body are
produced as a single piece from the same material. It is thereby
possible to produce a single-piece carrier element having integrated
gas volumes, in which the carrier element then constitutes the
envelope body.

(’282 appl., Exh. 2002, ¶ 32 (emphasis added); Elmer Opp. 2, Paper 44, at 3:11-
20.) Elmer argues further that this integrated gas-filed container/carrier element
can be part of an apparatus that includes a support framework comprising a
plurality of rigid cages. (See Elmer Opp. 2, Paper 44, at 3:21-4:10.) Specifically,
the Elmer specification describes gas-filled containers (carrier elements integrated
Interference 106,062
11

with the envelope body) clamped to rigid cages. (See ’282 appl., Exh. 2002, Fig.
1, Fig. 5, and ¶ 57 (“The envelope bodies 1 enclosing the gas are fastened in the
cages 12 by means of the carrier elements 2 clamped in the cages 12.”)
According to James L. Cairns, Ph.D.4, Elmer’s witness,
[i]n the embodiment in which the carrier elements are integral with
the envelope bodies, a person skilled in the art would have understood
the gas-filled bodies to themselves be clamped to the cages. A person
skilled in the art would therefore have understood the Elmer
application to provide written description for the requirement that
gas-filled containers be “in contact with one or more of the plurality
of rigid support members,” as set forth in Elmer independent claim 1.

(Second Declaration of James L. Cairns, Ph.D. (“Second Cairns Decl.”), Exh.
1012, at ¶ 69.) Thus, Elmer argues that the description of gas-filled envelopes
integrated into a carrier element and clamped to a cage fulfills the written
description requirement of 35 U.S.C. § 112. (See Elmer Opp. 2, Paper 44, at 4:10-
14.)
Citing to Dr. Cairn’s testimony, Elmer also argues that the description of
carrier elements as a cable would be interpreted by one of skill in the art to be an
element held in tension and, therefore, rigid, especially given the buoyancy of the
envelopes. (Id. at 5:1-17, citing ’282 appl., Exh. 2002, ¶ 31.) Dr. Cairns testifies:
In this alternative embodiment, a person skilled in the art would have
understood, in connection with Fig. 5 of the Elmer application, a

4 Dr. Cairns testifies that he has a Ph.D. in physical oceanography and has been
active in research related to marine physics, including underwater acoustics for 50
years. (First Declaration of James L. Cairns, Ph.D. (“Cairns Decl.”), Exh. 1008, at
¶¶4 and 5.) Dr. Cairns testifies that he has been employed by the U.S. Navy and
was responsible for all operations aboard a U.S. Navy offshore research tower,
including design, installation, and maintenance of sensor arrays mounted directly
to the tower pilings or attached to cables buoyed upward from the seafloor. (Id. at
¶ 5.) We find Dr. Cairns qualified to testify about the subject matter of this
interference.
Interference 106,062
12

plurality of gas-filled containers to be fastened to the cages as the
envelope body arrays are arranged on carrier elements or cables that
can be held in tension such that they become rigid.

(Second Cairns Decl., Exh. 2012, at ¶ 70.)
Texas rejects this explanation, arguing that “[i]f, as alleged by Elmer, the
cables are ‘held in tension’ such that the cables act as rigid (inflexible) members,
the cables would not allow the gas-filled bodies to move freely horizontally and
would place mechanical strain on the gas-filled bodies.” (Texas Reply 2, Paper 65,
at 2:22-24.) According to Texas, this arrangement would contradict the provision
in the Elmer specification that the carrier elements move freely horizontally to
avoid becoming an obstacle for fish and other marine life. (See id. at 2:24-3:6.)
Texas does not persuade us that Elmer’s reading of its specification is
wrong. We are not persuaded that a rigid cable could not move freely in a
horizontal direction, “at least to a limited extent” as described in the Elmer
specification. (See ’282 spec., Exh. 2002, ¶ 19.) Texas does not direct us to
evidence showing that tension on the cable would indicate how the cable, as a
whole, would move in its environment. “Argument of counsel cannot take the
place of evidence lacking in the record.” Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977).
Texas also argues that because the Elmer specification teaches that the gas-
filled envelopes are protected against excessive mechanical loading, it would be
inconsistent to incorporate them into a rigid cable serving as the carrier element.
(See Texas Reply 2, Paper 65, at 3:8-14, citing ’282 spec., Exh. 2002, at ¶ 39.)
According to Texas, such an arrangement would put an “excessive mechanical
load” on the gas-filled envelope bodies. Again, Texas fails to direct us to support
for this statement and fails to explain what an “excessive mechanical load” would
Interference 106,062
13

be. We are not persuaded that the arrangement proposed by Elmer would be
inconsistent with any other description in its specification.
We credit Dr. Cairns’s testimony that the Elmer specification describes gas-
filled envelope bodies integrated into the carrier element and his testimony that
because the carrier element may be a cable clamped on a cage, the specification
describes an embodiment with gas-filled envelope bodies in contact with a rigid
support member. Although it contradicts the statement made by the examiner of
the Texas application, we give more weight to Dr. Cairns’s testimony because it is
supported by specific parts of the specification. Texas fails to direct us to
contradictory evidence from the Elmer specification or to contradictory testimony,
such as elicited on cross-examination of Dr. Cairns.
B. Creating a void fraction
Elmer independent claims 1, 7, and 9 include a limitation “wherein the gas-
filled containers create a void fraction for the device such that a preselected noise
reduction is achieved.” (Elmer Clean Copy of Claims, Paper 5, at 3.) Texas
argues that this limitation is not supported in Elmer’s application because a “void
fraction” is not described. (See Texas Motion 2, Paper 24, at 9:20-12:10.) Texas
explains that according to its specification, a void fraction is the ratio of the
volume of air to the total volume of water and air in a bubbly region. (See Texas
Motion 2, Paper 24, at 10:8-10, citing ’935 patent, Exh. 2001, at 7:56-60.) Texas
argues that there is no equivalent calculation to achieve a preselected noise
reduction in the Elmer specification. (See Texas Motion 2, Paper 24, at 10:10-11.)
In its suggestion for an interference, Elmer cited paragraphs 25 and 26 as
support for this element of its claims, but according to Texas nothing in paragraph
25 indicates sound reduction is related to void fraction. (See id. at 10:12-22.)
Texas argues that even though paragraph 26 teaches tailoring the apparatus to a
specific application, it teaches that reduction of sound is dependent on four
Interference 106,062
14

limitations, not just the void fraction. According to Texas, “even if the function set
forth in the Elmer Application is considered to teach some of the variables used in
the void fraction calculation, the Elmer Application also requires additional
variables that are not part of the determination of the void fraction.” (Id. at 11: 12-
15.) Texas concludes that, like paragraph 25, nothing in paragraph 26 indicates
that sound reduction is related to the void fraction. (See id. at 11:19-20.)
Elmer opposes, arguing that its claims do not require calculation of a void
fraction and do not require that the noise reduction achieved be created solely
through a void fraction. (Elmer Opp. 2, Paper 44, at 6:16-19.)
Elmer argues further that those of ordinary skill in the art would have
understood its specification to demonstrate possession of gas-filled containers that
create a void fraction based on Dr. Cairns’s testimony that the term was generally
understood by those in the art. (See id. at 6:20-7:19, citing Second Cairns Decl.,
Exh. 1012, at ¶¶ 72-74.) Dr. Cairns testifies that “a person skilled in the art would
have understood [fractional air volume] to describe the fractional volume of air
bubbles within the air-water mixture, and its effect on sound attenuation.” (Second
Cairns Decl., Exh. 1012, at ¶¶ 72-74, citing U.S. Patent 6,145,459, Exh. 1018, at
1:21-29, and 47 Geophysics 345 (1982), Exh. 1020.) In general, Dr. Cairns
testifies:
A person of ordinary skill in the art would have considered all of the
Elmer Application’s teachings, including those regarding “the
frequency-dependent reduction of a sound wave passing through the
body of water is a function, substantially, of the natural frequencies,
the damping capacity, the distribution, the concentration of the air-
filled envelope bodies and the dimension of the device through which
the sound wave passes” (Ex. 2002, [0026]), together with disclosure
of “the material, diameter and pressure of each envelope body [that]
corresponds to an emitted frequency range of the hydrosound so as to
dampen the hydrosound” (Ex. 2002, [0015]) whereby “[t]he natural
frequency… is a function of the diameter, the adjustable elasticity and
Interference 106,062
15

the internal pressure of the envelope body” (Ex. 2002, [0020]) to
demonstrate possession of gas-filled containers that create a “void
fraction” or “concentration” such that the preselected noise reduction
is achieved.

(Second Cairns Decl., Exh. 1012, at ¶ 80.) According to Dr. Cairns, “[a] person of
ordinary skill in the art would have understood that an arrangement of gas-filled
containers designed and deployed in accordance with the teachings of the Elmer
Application would inherently create a predefined ‘void fraction’ when placed in
the water that achieves a preselected noise reduction.” (See id. at ¶ 82.)
We find Dr. Cairns’s testimony persuasive because even though the Elmer
specification does not expressly recite a “void fraction” it discloses the components
of a void fraction that are inherently created when noise reduction is achieved.
Texas’s argument that the void fraction is the “primary factor” for achieving a
preselected noise reduction does not persuade us otherwise. (See Texas Reply 2,
Paper 65, at 4:15-5:7.) That the Elmer specification discusses other factors, does
not change the fact, supported by Dr. Cairns’s testimony, that noise reduction
would inherently involve creation of a void fraction.
To determine compliance with the written description requirement, we look
to “whether the disclosure of the application as originally filed reasonably conveys
to the artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983). Accordingly, we are not persuaded that the limitation to gas-filled
containers that create a void fraction is not sufficiently described in the Elmer
specification.
C. Round shape
Interference 106,062
16

Texas argues that Elmer’s independent claim 9 is unpatentable because its
specification fails to adequately describe the term “wherein in one or more of the
plurality of gas-filled containers include a round shape.” (Texas Motion 2, Paper
24, at 12:18-15:7.) According to Texas, Elmer describes spherical envelope bodies
only, but the full scope of the term “round” includes disk-shaped and toroid-shaped
envelope bodies. (See id. at 13:24-14:9.) According to Texas, “there is no
teaching or suggestion in Elmer that would allow a person of ordinary skill in the
art to be able to predict how a change in shape of the envelope bodies would affect
the sound reducing properties of the device.” (Id. at 14:15-17.)
Elmer argues that Figures 2 and 4 of its specification depict round gas-filled
containers. (See Elmer Opp. 2, Paper 44, at 12:1-9.) We agree with Elmer that the
depiction of round gas-filled containers in the figures and of spherical bubbles in
the text of its specification would have been sufficient to convey to one of ordinary
skill in the art that Dr. Elmer was in possession of round gas-filled containers.
Disclosure of a species may be sufficient written description support for a later
claimed genus including that species. (See id. at 14:18-21.) As explained in
Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004), disclosure of one
species may be sufficient in predictable arts, where the difference between
members of the group is such that the person skilled in the art would readily
discern that other members of the genus would perform similarly.
Texas bears the burden of proving those of skill in the art would have not
been able to predict from the spherical gas-filled containers (bubbles) expressly
described in Elmer’s specification that any round container would also work. (See
Texas Motion 2, Paper 24, at 14:15-17.) Texas presents attorney argument, but
does not direct us to other evidence. Accordingly, we are not persuaded that the
disclosure of the spherical and round containers in Elmer’s specification is an
insufficient written description of the containers of claim 9.
Interference 106,062
17

D. Enablement
Texas argues that the Elmer application does not enable the Elmer claims
because it does not describe using the void fraction to achieve preselected noise
reduction. (See id. at 15:10-17:9.) Texas argues that one of skill in the art would
need to perform an undue amount of experimentation to determine how each of the
factors taught to be part of frequency-dependent sound wave reduction in the
Elmer application would be used to alter noise reduction by the device. (See id. at
16:23-26.)
The Elmer claims are drawn to an apparatus with gas-filled containers that
create a void fraction to reduce preselected noise. (Elmer Clean Copy of Claims,
Paper 5, at 3.) As Elmer argues, its claims are not drawn to a method using a void
fraction. (See Elmer Opp. 2, Paper 44, at 16:11-14.)
Texas does not argue that one of ordinary skill in the art would not have
been able to make an apparatus that achieves preselected noise reduction after
reading Elmer’s specification. Instead, we are persuaded by Dr. Cairns’s
testimony regarding the skill of those in the art and the evidence upon which he
relies. (See Second Cairns Decl., Exh. 1012, at ¶ 73, citing 47 GEOPHYSICS 345
(1982), Exh. 1020, at 350 and Fig. 11.) Exhibit 1020 teaches adjusting fractional
air volume of a curtain of air bubbles, i.e., the “void fraction,” along with other
parameters to determine the velocity and attenuation of sound waves. (Id.) The
Elmer specification teaches void fractions, or an “effective volume concentration”
in an embodiment. Thus, we are persuaded that those of skill in the art would have
been able to make an apparatus to achieve preselected noise reduction from
Elmer’s specification. Texas does not direct us to evidence contradicting Dr.
Cairns’s testimony.
Accordingly, even if the Elmer specification does not expressly teach using
the void fraction to achieve a preselected noise reduction, we are not persuaded
Interference 106,062
18

that it fails to enable Elmer’s claimed apparatuses.
We are not persuaded that Elmer’s claims are unpatentable for lack of
enablement under 35 U.S.C. § 112. Thus, we deny Texas Motion 2.

IV. Elmer Motion 1 – Benefit
Elmer moves to be accorded benefit of the filing date of its prior German
application, DE 10 2008 017 418.1 (“the German application”), as a constructive
reduction to practice of the Count. (Elmer Motion 1, Paper 32.) To prevail, Elmer
must show that the German application fulfills the requirements of 35 U.S.C.
§ 112, first paragraph, for one embodiment within the scope of the Count. See
Hunt v. Treppschuh, 523 F.2d 1386, 1389 (C.C.P.A. 1975).
Findings of fact
We make the following findings of fact, which, like other findings in this
opinion, are supported by a preponderance of the evidence.
1. The German application discloses that “[t]he invention relates to a
device for reducing the transmission and propagation of sound and/or wave
motions in a liquid, particularly water, by means of at least one envelope body
enclosing a gas.” (German appl., Exh. 1003, at 2:2-45.)
2. The German application provides Figure 3 depicting a support
structure with a net that may be formed with cables. (Id. at 10:30-35.)
3. The German application provides Figure 4, which discloses cages
made of solid material such as metal or plastic. (Id. at 9:4-6 and 10:1-6; see Cairns
Decl., Exh. 1008, at ¶ 37.)

5 Page numbers refer to the page of the exhibit, not the underlying document,
except where otherwise noted.
Interference 106,062
19

4. The German application discloses flexible membrane envelope bodies
composed of a thin-walled, elastic material having a high damping capacity.
(German appl., Exh. 1003, at 7:15-25.)
5. The German application discloses a carrier and envelope “produced as
a single piece from the same material” in order to “produce a single-piece carrier
element having integrated gas volumes, in which the carrier element then
constitutes the envelope body.” (German appl., Exh. 1003, at 8:4-7.)
6. The German application discloses that the envelope bodies “fixed in”
cages or cable nets. (Id. at 9:10-11.)
7. Dr. Cairns testifies that the disclosure in the German application of
envelope bodies produced as a single piece with the carrier elements and fixed to
the cages or cables would have been understood by a person or ordinary skill in the
art as a description of a gas-filled containers in contact with the plurality of rigid
support members (Cairns Decl. Exh. 1008, at ¶¶ 37-43.)
8. The German application discloses carrier elements that are aligned
vertically because of the buoyancy of the envelope bodies. (German appl., Exh.
1003, at 7:1-3.)
9. The German application discloses envelope bodies fixed in a cage,
preventing vertical movement. (Id. at 7:1-3 and 9:10-11.)
10. Dr. Cairns testifies that one of ordinary skill in the art would have
understood from the German application that numerous physical characteristics of
the envelope bodies that can be tuned to a particular resonance frequency. (Cairns
Decl., Exh. 1008, at ¶ 48.)
11. Dr. Cairns testifies that the term “void fraction” refers to a fraction of
volume in the water around the underwater device, including the pockets of air
contained in envelope bodies. (Id. at ¶ 49.)
Interference 106,062
20

12. The German application discloses that the natural frequency of a gas
bubble is dependent on the gas volume, as well as the elasticity of the gas bubble,
the specific weight of the gas, the water pressure, and the temperature of the gas.
(German appl., Exh. 1003, at 3:30-33.)
13. The German application discloses that “gas enclosed by the envelope
body is prevented by the mass body from rising up in the water” to maintain gas
volumes. (Id. at 6:24-26.)
14. Dr. Cairns testifies that a person skilled in the art would have
understood that enclosed and submerged gas, such as in the envelope bodies/gas-
filled containers is a “void fraction for the device” and achieves the desired noise
reduction. (Cairns Decl., Ex. 1008, ¶ 49.)
B. Analysis
Elmer cites to the specification of the German application and to Dr.
Cairns’s testimony to support its argument that it is entitled to the benefit of the
filing date of that application as to the Count. The specification of the German
application appears to be very similar to the specification of Elmer’s involved
application.
First, Elmer argues that the German application describes an apparatus for
reducing the transmission and propagation of sound and/or wave motions in water
that has a frame structure supporting a plurality of gas-filled containers, referred to
as “envelopes.” (See Elmer Motion 1, Paper 32, at 4:9-6:15, citing German appl.,
Exh. 1003, at 2:2-46 and Figs. 3 and 4; FF 1.) Elmer directs us to the description of
the gas-filled envelopes in the German application as being made of thin-walled

6 Page numbers refer to the page of the underlying document, not the numbering in
the exhibit, except where otherwise noted.
Interference 106,062
21

elastic material fixed to the supports of the cage. (See Elmer Motion 1, Paper 32,
at 6:18-7:9, citing German appl, Exh. 1003, at 7:15-25 and 9:10-11; FF 4.)
Elmer offers two disclosures showing that the German application supports
an apparatus of the Count, including “rigid support members.” (See id. at 4:16-
6:13.) First, Elmer argues that the cable net depicted in Figure 3 of the German
application can be held in tension to form a rigid framework. (Elmer Motion 1,
Paper 32, at 5:1-11; Cairns Decl., Exh. 1008, at ¶¶ 35 and 52; see FF 2.) In the
alternative, Elmer argues that the German application provides Figure 4 depicting
for a plurality of stacked cages surrounding the underwater device. (See Elmer
Motion 1, Paper 32, at 6:4-13, citing German appl., Exh. 1003, at 9:4-6, and Cairns
Decl., Exh. 1008, at ¶ 37; FF 3.) Elmer argues that these cages are expressly
described as being made of “a solid material such as metal or plastic.” (See Elmer
Motion 1, Paper 32, at 6:8-10, citing German appl., Exh. 1003, at 9:4-6; FF 3.)
Texas argues7 that the German application does not disclose an apparatus
with rigid support members because the term “tension” does not appear in the
application. (See Texas Opp. 1, Paper 57, at 5:10.) Texas argues further that the
net shown in Figure 3 of the German application does not teach or suggest
sufficient tension to be an inflexible or rigid framework. (See id at 5:10-18.)
According to Texas, the net depicted in Elmer cannot be a “rigid support member”
because the buoys to which the net is attached will move with waves, periodically
releasing the tension on the net. (See id. at 7:2-9:6.)
Texas also argues that Figure 4 of the German application does not support
the element of “rigid support members” of the Count. (See Elmer Motion 1, Paper

7 In its Opposition, Texas “moves for a Judg[]ment” that Elmer is not entitled to
the benefit of the filing date of the German application. (Texas Opp. 1, Paper 57,
at 1:6-10 and 2:12-20.) Elmer was not accorded benefit of an earlier filing date
upon declaration. Thus, Texas is not the movant on this issue.
Interference 106,062
22

32, at 15:11-19:19.) Although Texas does not dispute that the German application
discloses an embodiment of the apparatus that uses cages made of metal or plastic
with envelope bodies fasted to the cage (see Texas Response to Elmer Material
Facts 24-28), Texas argues that because the cables are described as being able to
move freely in a horizontal position, they cannot be inflexible or rigid. (Texas
Opp. 1, Paper 57, at 16:21-17:20.) Texas also argues, without citing evidence in
support, that the thin-walled elastic material used for the envelope bodies in the
German application would break or deform if enough tension were placed on them
to create a rigid member. (Texas Opp. 1, Paper 57, at 17:21-19:19.)
Even if the cables themselves are not rigid, we are not persuaded by Texas’s
arguments, because the German application discloses cages made of metal or
plastic. The German application also discloses carrier and envelope bodies
“produced as a single piece from the same material” in order to “produce a single-
piece carrier element having integrated gas volumes, in which the carrier element
then constitutes the envelope body.” (German appl., Exh. 1003, at 8:5-7; FF 5.)
Because these single pieces are “fixed in” cages or cable nets (id., at 9:10-15; FF
6), we are persuaded that the German application discloses gas-filled containers
that are “in contact with” these rigid support members. (See Elmer Motion 1,
Paper 32, at 7:13-10:14; Elmer Reply, Paper 63, at 4:8-21, citing Cairns Decl. Exh.
1008, at ¶¶ 37-43.)
We are also persuaded that the German application describes rigid support
members that prevent vertical movement of the plurality of gas-filled containers, as
required in the Count. We agree with Elmer that the discussion of vertical
alignment and fastening discloses this element and that fixing the envelope bodies
in a cage prevents vertical movement. (See Elmer Motion 1, Paper 32, at 9:3-12
and 10:4-7, citing German appl., Exh. 1003, at 7:1-2 and 9:10-11 and Cairns Decl.,
Interference 106,062
23

Exh. 1008, at ¶ 35; FFs 8 and 9). Texas does not argue or present evidence to the
contrary.
We are persuaded by Elmer’s arguments that the German application
supports the element of the Count that requires gas-filled bodies with a physical
characteristic that confers a selected resonance frequency when immersed in water.
(See Elmer Motion 1, Paper 32, at 10:17-11:9.) The German application discloses
that the natural frequency of a gas bubble is dependent on the elasticity of the gas
bubble, the gas volume, the specific weight of the gas, the water pressure and the
temperature of the gas (See German appl., Exh. 1003, at 2:30-33; FF 12) and Dr.
Cairns testifies that one of ordinary skill in the art would have understood that the
envelope bodies that can be tuned to a particular resonance frequency (See Cairns
Decl., Exh. 1008, at ¶ 48; FF 10). Texas does not argue or present evidence to the
contrary.
The parties disagree about support for the term “wherein the gas-filled
containers create a void fraction for the device such that a preselected noise
reduction is achieved” in the German application. Elmer cites to Dr. Cairns’s
testimony that the term “void fraction” refers to a fraction of volume in the water
around the underwater device, including the pockets of air contained in envelope
bodies. (See Elmer Motion 1, Paper 32, at 11:12-22, citing Cairns Decl., Ex. 1008,
¶ 49; FF 11.) Elmer argues that the German application discloses that “gas
enclosed by the envelope body is prevented by the mass body from rising up in the
water” to maintain gas volumes. (See German appl., Exh. 1003, at 6:24-26; FF
13.) According to Dr. Cairns, this passage would have been understood to mean
that the enclosed and submerged gas in the envelope bodies create a void fraction
to achieve the desired noise reduction. (See Cairns Decl., Ex. 1008, ¶ 49; FF 14.)
Texas opposes Elmer’s position with arguments similar to those presented in
its motion for unpatentability under 35 U.S.C. § 112. As discussed above, we do
Interference 106,062
24

not find these arguments to be persuasive. Briefly, Texas argues that the German
application does not use the term “void fraction” and does not teach performing a
calculation to achieve preselected noise reduction. (See Texas Opp. 1, Paper 57, at
21:15-23:8.) The Count, like Elmer’s claims discussed above, is drawn to an
apparatus, not a method of achieving a preselected noise reduction. Accordingly,
contrary to Texas’s argument, the German application need not explain how to use
a calculation of void fraction to achieve a preselected noise reduction. (See Elmer
Reply 1, Paper 63, at 9:23-10:1.) Furthermore, even though the Count requires that
the gas-filled containers “create a void fraction,” we are persuaded by the
testimony of Dr. Cairns that the disclosure of maintenance of gas volumes would
demonstrate possession of gas-filled containers creating a “void fraction.” (See
Elmer Reply 1, Paper 63, at 10:14-22, citing Cairns Decl., Exh. 1008, at ¶ 49.)
Contrary to Texas’s arguments, we are persuaded by Elmer’s arguments that
the German application is enabling of an embodiment of the Count because it
discloses making an apparatus with bubbles having certain parameters, including
diameter, which will absorb certain sound frequencies. (See Elmer Motion 1,
Paper 32, at 12:3-13:4, citing Cairns Decl., Exh. 1008, at ¶ 51, see German appl.,
Exh. 1003, at 3:30-33.) Because the envelope bodies provided in the German
application would inherently create a void fraction as recited in the Count we are
not persuaded by Texas’s argument that without express recognition or examples
using only the volume of air in the gas-filled containers and the volume of water in
the bubbly region, one of skill in the art would not know how to make and use the
apparatus of the Count. (See Texas Opp. 1, Paper 57, at 24:15-26:9)
Texas also argues that the German application does not provide a written
description of gas-filled containers with a round shape. (See Texas Opp. 1, Paper
57, at 23:14-24:10.) Because this is not a limitation recited in the Count, we need
not consider this argument.
Interference 106,062
25

For the reasons cited above, Elmer has persuaded us that the German
application is a constructive reduction to practice of an embodiment of the Count
and that Elmer should be accorded its filing date of 3 April 2008.

V. Priority
In its Priority Statement, Texas asserts conception on 29 April 2009 and a
date of “first experiment demonstrating the invention” on 14 May 2009. (See
Paper 22.) Because both of these dates are later than the filing date of Elmer’s
German application, 3 April 2008, which was accorded to Elmer by the grant of its
Motion 1, we determine that Texas cannot prevail on a showing of priority.
Accordingly, we enter judgment against Texas.

VI. Conclusion
We deny Texas Motion 1 for a judgment of no interference-in-fact.
We deny Texas Motion 2 for a judgment of unpatentability under 35 U.S.C.
§ 112.
We grant Elmer Motion 1 for benefit of priority of the German application.
The interference will be redeclared separately to reflect this benefit.
Judgment against Texas will be entered separately.

Interference 106,062
26

Counsel for Junior Party TEXAS
Mark R. DeLuca
Ryan Beard
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, PC
mdeluca@intprop.com
rbeard@intprop.com

Counsel for Senior Party ELMER

Wesley O. Mueller
Thomas P. Canty
Elias P. Soupos
LEYDIG, VOIT & MAYER, LTD.
wmueller@leydig.com
tcanty@leydig.com
esoupos@leydig.com