Kimberly-Clark Worldwide, Inc.

Patent Trials and Appeals Board

Jun 22, 2021

PGR2021-00019 (P.T.A.B. Jun. 22, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Date: June 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ALBANY INTERNATIONAL CORP.,
Petitioner,
v.
KIMBERLY-CLARK WORLDWIDE, INC.,
Patent Owner.

PGR2021-00019
Patent 10,584,444 B2

Before CHRISTOPHER L. CRUMBLEY, SUSAN L. C. MITCHELL, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION
Denying Institution of Post-Grant Review
35 U.S.C. § 324
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I. INTRODUCTION
A. Background and Summary
Albany International Corp. (“Petitioner”) filed a Petition (Paper 14,
“Pet.”) seeking a post-grant review of claims 1–13 (“the challenged claims”)
of U.S. Patent No. 10,584,444 B2 (Ex. 1001, “the ’444 Patent”). Kimberly-
Clark Worldwide, Inc. (“Patent Owner”) filed a Preliminary Response.
Paper 18 (“Prelim. Resp.”). With the Board’s prior authorization (Paper 19),
Petitioner filed a Reply to the Preliminary Response (Paper 20, “Pet. Reply”)
and Patent Owner filed a Sur-reply (Paper 21, “PO Sur-reply”), limited to
addressing Patent Owner’s arguments for discretionary denial of institution.
Exercising the authority delegated to the Board under 35 U.S.C. § 324
and 37 C.F.R. § 42.4(a), we may not institute a post-grant review unless “the
information presented in the petition . . . , if such information is not rebutted,
would demonstrate that it is more likely than not that at least 1 of the claims
challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). In
determining whether to institute a post-grant review, we “may take into
account whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were presented to
the Office.” 35 U.S.C. § 325(d).
After considering the information presented in the Petition and the
Preliminary Response, we determine that the Petition does not meet the
“more likely than not” standard with respect to any of the challenged claims.
After considering the parties’ arguments concerning discretionary denial of
institution, we determine that we should also exercise our discretion under
§ 325(d) to deny the Petition, which provides an additional reason for
denying institution. Therefore, we deny institution of a post-grant review.
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B. Related Matters
Aside from a pending continuation application, neither party identifies
any judicial or administrative matter that would affect, or be affected by, a
decision in the proceeding. Pet. 2; Paper 16, 1 (Patent Owner’s Mandatory
Notices).
C. The ’444 Patent (Ex. 1001)
The ’444 Patent discloses a two layer papermaking belt useful in the
manufacture of through-air dried tissue products. Ex. 1001, code (57),
1:59–64. The belt has a first woven layer and a second nonwoven layer
joined together in a laminated arrangement. Id. The woven layer forms the
machine contacting layer of the belt and is woven from a highly abrasion
resistant material, while the nonwoven layer contacts the nascent tissue web.
Id. at 1:64–2:8. There are voids between the first and second layers as a
result of the woven layer having a three dimensional topography defined by
yarns woven into ridges and valleys on top of which lies the nonwoven
layer. Id.
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Figures 1A–1C of the ’444 Patent are reproduced below.

Figures 1A–1C show a woven fabric that forms a support structure for a
laminated papermaking belt. Ex. 1001, 3:11–16, 6:49–50. As shown in
Figures 1B and 1C, the yarns are woven so as to provide two surface planes
lying in different elevations--a first surface plane 51 having a first
z-direction elevation and a second surface plane 52 having a second
z-direction elevation. Id. at 6:63–67. As shown in Figure 1B, support
structure 40 comprises a plurality of ridges 47 and valleys 49 aligned in the
machine direction and spaced apart from one another in the cross-machine
direction. Id. at 7:11–20. The upper surface of ridge 47 defines first surface
plane 51. Id. at 7:5–6.
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Figures 5A and 5B of the ’444 Patent are reproduced below.

Figures 5A and 5B show a laminated papermaking belt comprising
nonwoven layer 200 laminated to support structure 300 formed from woven
yarns 310, 312. Ex. 1001, 3:23–26, 12:37–41. As shown in Figure 5A,
nonwoven layer 200 comprises lattice grid framework 210 having planar
upper surface 202 and a plurality of rectangular shaped apertures 220
separated from one another by lattice grid elements 260. Id. at 11:9–11,
12:41–45. Apertures 220 open onto underlying support structure 300 to
define web contacting portions 302, which together with upper surface 202
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of framework 210 form the web contacting surface of the laminated belt. Id.
at 12:45–49.
As shown in Figure 5B, woven fabric 300 comprises yarns that are
woven to provide two surface planes lying in different elevations--first
surface plane 320 having a first z-direction elevation and second surface
plane 322 having a second z-direction elevation. Ex. 1001, 12:50–55.
Woven fabric 300 comprises a plurality of ridges 303, the uppermost portion
of which define first plane 320, and a plurality of valleys 305 disposed
between ridges 303, the upper surface of which defines second plane 322.
Id. at 12:55–60. When nonwoven layer 200 and woven layer 300 are
laminated to form the multilayer belt, a portion of nonwoven framework 210
bridges adjacent ridges 303 creating void 307 having a height (D)
corresponding to the z-direction difference between first surface plane 320
and second surface plane 322 of woven layer 300. Id. at 12:65–13:6,
13:23–27.
According to the ’444 Patent, it is preferred that yarns forming woven
layer 300 are not enveloped or otherwise surrounded by nonwoven layer 200
after lamination and that bottom surface plane 214 of nonwoven layer 200
does not extend beyond uppermost surface plane 320 of woven layer 300,
such that a distinct boundary is formed between nonwoven layer 200 and
woven layer 300, which is generally coplanar with upper surface plane 320
of woven layer 300. Ex. 1001, 13:10–22.
D. Illustrative Claim
The ’444 Patent includes thirteen claims, all of which are challenged
in the Petition. Claim 1 is the sole independent claim and is reproduced
below with paragraph breaks added to make the claim easier to read.
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1. A laminated papermaking belt having a machine
direction and a cross-machine direction, a machine contacting
surface and an opposite web contacting surface,
the belt comprising discrete first and second layers joined
together in a face-to-face relationship, each of the at least first
and second layers having a top surface, a bottom surface opposite
to the top surface,
the top surface of the first layer forming a portion of the
web contacting surface of the belt, and the bottom surface of the
second layer forming the machine contacting surface of the belt,
wherein the first layer comprises a nonwoven material and
the second layer comprises a plurality of woven ridges lying in a
first x-y plane and a plurality of woven valleys lying in a second
x-y plane below the first x-y plane
such that the first layer contacts at least a portion of the
plurality of woven ridges and comprises a plurality of suspended
portions elevated in the z-direction from the second x-y plane to
form void spaces between the second x-y plane and the
suspended portions.
Ex. 1001, 17:58–18:18.
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E. Asserted Grounds
Petitioner asserts the following grounds of unpatentability:
Claim(s)
Challenged 35 U.S.C. §
1 Basis/Reference(s)
1 1–4, 6, 7, 9, 11–13 102(a)(1) Alleged sales of forming fabrics2
2 5, 8 103 Alleged sales in view of Eagles3
3 10 103 Alleged sales in view of Stone4
4 1–9, 11, 12 102(a)(1) Eagles
5 10 103 Eagles, Stone
6 13 103 Eagles in view of alleged sales
7 1, 2, 4, 5, 8, 9, 11, 13 102(a)(1) Sealey5
8 3, 6, 7, 12 103 Sealey, Eagles
9 10 103 Sealey, Stone
10 1–4, 8, 9, 11, 12 102(a)(1) JP ’2386
11 1–4, 8, 9, 11, 12 102(a)(1) Lefkowitz7

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. The earliest possible effective filing date for the challenged claims is
July 31, 2017. Ex. 1001, code (60). Because this date is after March 16,
2013, the AIA version of the statute applies, and the ’444 Patent is eligible
for post-grant review.
2 Petitioner alleges that it sold MS015 forming fabric to Georgia-Pacific,
LLC (“GP”) in December 2013 and that it sold LB003 and LB004 forming
fabrics to GP in March 2015. Pet. 12–14.
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II. ANALYSIS
A. Principles of Law
In addition to patents and printed publications, the prior art for
purposes of a post-grant review includes products that were “on sale . . .
before the effective filing date of the claimed invention.” 35 U.S.C.
§ 102(a)(1); 35 U.S.C. § 282(b)(2), (3); 35 U.S.C. § 321(b).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). “[A] prior art reference may anticipate without disclosing
a feature of the claimed invention if that missing characteristic is necessarily
present, or inherent, in the single anticipating reference.” Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
In AIA contested proceedings, “the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (addressing inter partes review); 35 U.S.C. § 322(a)(3) (requiring
a post-grant review petition to identify “with particularity . . . the evidence
that supports the grounds for the challenge to each claim”); see also
37 C.F.R. § 42.204(b) (requiring a petition for post-grant review to identify

3 Ex. 1017, Eagles et al., US 2016/0090692 A1, published Mar. 31, 2016
(“Eagles”).
4 Ex. 1020, Stone et al., US 7,682,995 B2, issued Mar. 23, 2010 (“Stone”).
5 Ex. 1024, Sealey et al., US 2017/0233946 A1, issued Aug. 17, 2017
(“Sealey”).
6 Ex. 1025, JP 2008045238, published Feb. 28, 2008 (“JP ’238”).
7 Ex. 1026, Lefkowitz, US 5,077,116, issued Dec. 31, 1991 (“Lefkowitz”).
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how the challenged claim is to be construed and where each element of the
claim is found in the prior art patents or printed publications relied upon).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and, when presented, (4) objective evidence of
nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
by employing “mere conclusory statements,” but “must instead articulate
specific reasoning, based on evidence of record, to support the legal
conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
In determining whether to institute a post-grant review, we “may take
into account whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were presented to
the Office.” 35 U.S.C. § 325(d).
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Patent 10,584,444 B2
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The Board’s most recent precedential decision addressing § 325(d)
provides the following two-part framework:
(1) whether the same or substantially the same art previously was
presented to the Office or whether the same or substantially the
same arguments previously were presented to the Office; and
(2) if either condition of first part of the framework is satisfied,
whether the petitioner has demonstrated that the Office erred in
a manner material to the patentability of challenged claims.
Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
Advanced Bionics explains that the Becton, Dickinson factors8 provide
“useful insight” into how to apply the statutory framework and address
“challenging factual questions, such as when a ground of unpatentability
presents ‘substantially the same prior art or arguments’ previously presented
to the Office.” Id. at 9.
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art would
have had at least a Bachelor’s degree with at least 2–3 years of experience

8 Becton, Dickinson identifies the following non-exclusive factors: (a) the
similarities and material differences between the asserted art and the prior art
involved during examination; (b) the cumulative nature of the asserted art
and the prior art evaluated during examination; (c) the extent to which the
asserted art was evaluated during examination, including whether the prior
art was the basis for rejection; (d) the extent of the overlap between the
arguments made during examination and the manner in which petitioner
relies on the prior art; (e) whether petitioner has pointed out sufficiently how
the examiner erred in its evaluation of the asserted prior art; and (f) the
extent to which additional evidence and facts presented in the petition
warrant reconsideration of the prior art or arguments. Becton, Dickinson and
Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB
Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).
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working in the papermaking textile arts, or a Master’s Degree or Ph.D. in
engineering with an academic focus on textile belts used in papermaking or
the papermaking arts. Pet. 10. According to Petitioner, a person of ordinary
skill in the art would be familiar with fabrics, such as belts used in the
papermaking process or textile industry. Id.
We apply Petitioner’s definition of a person of ordinary skill in the
art, which is undisputed by Patent Owner and consistent with the subject
matter of the ’444 Patent and the asserted prior art.
C. Claim Construction
In a post-grant review, we apply the same claim construction standard
as would be used by a district court to construe a claim in a civil action
involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b)
(2020). Under that standard, claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. Id.; Phillips
v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
For purposes of this proceeding, the parties do not dispute the
meaning of any claim term. See Pet. 10–11 (relying upon express
definitions in the ’444 Patent and providing express constructions for two
terms in dependent claims); Prelim. Resp. 12 (asserting that issues raised in
the preliminary response are not affected by claim construction). We agree
with the parties that we do not need to resolve any claim construction
disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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construed that are in controversy, and only to the extent necessary to resolve
the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in
the context of inter partes review).
D. Lefkowitz Anticipation
1. Merits
Petitioner contends that Lefkowitz “discloses a two-layer forming
fabric, e.g., a belt for papermaking, that has a non-woven layer adhered to a
woven layer.” Pet. 90 (citing Ex. 1026, Abstract). Petitioner contends that
“[t]he woven layer has nonplanar ridges and valleys, each in a first and
second x-y plane.” Pet. 91 (citing Ex. 1026, 4:62–6:7, Figs. 5–15).
Petitioner contends that “[t]he nonwoven layer suspends over the valley
portions of the woven layer” and that “[v]oids are created by the ridge and
valley structure between the nonwoven and woven layers.” Id. (citing
Ex. 1026, 5:54–58, 6:61–70, 8:53–70, Figs. 4–15).
Petitioner provides the following annotation of Lefkowitz Figure 6.

Lefkowitz Figure 6 is a cross-sectional view of a forming fabric having
nonwoven sheet contact layer 34 comprised of randomly disposed
continuous filaments 36 adhered to a woven base fabric having warp yarns
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and filling yarns. Ex. 1026, 4:35–36, 4:39–40, 4:62–68, 6:8–21; see also id.
at 10:9–39 (claim 1). In Petitioner’s annotation, Petitioner contends that a
blue arrow points to a “void created between the nonwoven layer and the
woven layer.” Pet. 91. Petitioner contends that Lefkowitz’s “Figures 14 and
15 show how the nonwoven layer can suspend over the woven valleys.” Id.
Patent Owner argues that Petitioner does not show where Lefkowitz
teaches a “plurality of woven ridges” or a “plurality of woven valleys,” as
recited in claim 1, and does not identify the two “x-y plane[s]” recited in the
claim. Prelim. Resp. 35–39, 46. Patent Owner argues that “Lefkowitz is
substantially monoplanar” and that Petitioner’s alleged void “is just an
ordinary gap between yarns and common to any weave pattern.” Id. at 46
(Patent Owner’s annotation of Lefkowitz Figure 6 identifying essentially
coplanar first and second surfaces). Patent Owner argues that Lefkowitz
does not disclose woven valleys, a second x-y plane, void spaces, or
suspended portions, as recited in claim 1. Id. at 47.
We agree with Patent Owner that Petitioner’s contentions regarding
Lefkowitz and claim 1 are deficient. Petitioner does not identify where the
claimed ridges, valleys, and planes are disclosed in Lefkowitz. Pet. 90–93;
Prelim. Resp. 35–39, 46. Although Petitioner asserts that, in Lefkowitz,
“[t]he woven layer has nonplanar ridges and valleys, each in a first and
second x-y plane” (Pet. 91), Petitioner does not specify where such ridges,
valleys, and x-y planes are disclosed. Instead, Petitioner provides a citation
to a lengthy portion of Lefkowitz’s written description and eleven of its
fifteen drawings without appropriate elaboration as to how the description
and drawings meet the claimed ridges, valleys, and planes. Id. (citing
Ex. 1026, 4:62–6:7, Figs. 5–15). For instance, Petitioner provides a single
annotation of a single drawing of Lefkowitz, identifying with a blue arrow
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an alleged “void” between the nonwoven layer and the woven layer.
Pet. 91–92. But Petitioner does not provide annotations or other contentions
sufficient to identify ridges, valleys, or x-y planes in Lefkowitz’s forming
fabric. See 35 U.S.C. § 322(a)(3) (a post-grant review petition must identify
“with particularity . . . the evidence that supports the grounds for the
challenge to each claim”); see also 37 C.F.R. § 42.204(b)(5) (a post-grant
review petition must identify “the relevance of the evidence to the challenge
raised, including identifying specific portions of the evidence that support
the challenge”).
The deficiencies in Petitioner’s contentions for independent claim 1,
as discussed above, are not remedied by its contentions for dependent claims
2–4, 8, 9, 11, and 12. Pet. 93–98. For these reasons, we determine that
Petitioner has not shown it is more likely than not that Lefkowitz anticipates
claims 1–4, 8, 9, 11, and 12.
2. Section 325(d)
Applying the Advanced Bionics two-part framework, we determine
that Lefkowitz is the same as the art previously considered by the Office
during examination. See Prelim. Resp. 21–22, 33–34 (Patent Owner’s
§ 325(d) argument concerning Lefkowitz). The Examiner rejected
application claim 17 as anticipated by Lefkowitz. Ex. 1002, 53.9 In
response, applicant argued that “Lefkowitz discloses a woven layer that is
substantially monoplanar” and does not disclose a woven layer having a
plurality of woven ridges lying in a first x-y plane and a plurality of woven

9 Claim 17–26 and 34–36 of application no. 16/317,671 correspond to claims
1–13 of the ’444 Patent. Ex. 1001, code (21); Ex. 1002, 18 (claim
correspondence).
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valleys lying in a second x-y plane below the first x-y plane. Id. at 40–41.
In addition, applicant argued that Lefkowitz does not disclose that the
nonwoven layer has suspended portions lying above a woven valley. Id.
at 41 (reproducing Lefkowitz Figures 14 and 15). Following this response,
the Examiner allowed application claims 17–26 and 34–36 (corresponding to
claims 1–13 of the ’444 Patent). See id. at 13 (Examiner’s indication of
allowable subject matter).
Under the second part of the Advanced Bionics framework, we
determine that Petitioner has not demonstrated persuasively that the Office
erred in its evaluation of Lefkowitz in a manner material to the patentability
of the challenged claims. The Petition includes no substantive discussion of
the prosecution history and does not address whether the Examiner erred in
evaluating Lefkowitz. For the first time in the Reply, Petitioner argues that
the Examiner and Patent Owner do not appear to have considered
Lefkowitz’s teaching that its woven layer weave “prevents the yarns from
forming a flat surface” and that the cross-machine direction yarns “do not
reside in a single plane.” Pet. Reply 4 (quoting Ex. 1026, 5:12–17;
emphasis is Petitioner’s).
We agree with Patent Owner that the Petition does not direct us to this
disclosure in Lefkowitz, which is contained within 82 lines of text cited by
Petitioner. PO Sur-reply 2; Pet. 91 (citing Ex. 1026, 4:62–6:7, Figs. 5–15).
We also agree with Patent Owner that Lefkowitz’s disclosure quoted in
Petitioner’s Reply is a description of Lefkowitz Figures 2 and 3, which are
no more pertinent in providing any teaching as to the limitations of claim 1
than Lefkowitz Figures 14 and 15, which were substantively addressed
during prosecution. PO Sur-reply 2; Ex. 1002, 53 (Examiner’s rejection
citing Lefkowitz Figure 15 as showing ridges, valleys, planes, suspended
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portions, and void spaces); id. at 40–41 (applicant’s response reproducing
Lefkowitz Figures 14 and 15 and arguing that they do not show suspended
portions lying above a woven valley). The prosecution history does not
support Petitioner’s assertion that the Examiner did not consider Lefkowitz’s
teaching about the woven layer’s yarns not forming a flat surface and not
residing in a single plane. The same teaching is provided in Lefkowitz
Figures 14 and 15, which were expressly considered by the Examiner.
Ex. 1002, 13, 36, 41 (notice of allowability in response to applicant’s
amendment and remarks discussing Lefkowitz Figures 14 and 15).
Next, Petitioner argues that the Examiner does not appear to have
considered Lefkowitz’s teaching that “a coating of particles that bridge
across interstices between support surfaces in the base fabric.” Pet. Reply 4
(quoting Ex. 1026, 8:55–57; emphasis is Petitioner’s). We agree with Patent
Owner that the cited disclosure of Lefkowitz does not show Examiner error.
Pet Sur-reply 3. The cited disclosure is no more pertinent in providing any
teaching as to the limitations of claim 1 than Lefkowitz Figures 6, 9, 12, and
15, which show a nonwoven layer adhered to a woven base fabric, with
fibers of the nonwoven layer bridging interstices between adjacent yarns of
the woven base fabric. As discussed above, the Examiner expressly
considered and allowed the claims over Lefkowitz Figures 14 and 15.
Ex. 1002, 13, 36, 41, 53. Petitioner does not persuade us that the Examiner
erred by allowing the claims after considering applicant’s argument
distinguishing Lefkowitz.
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E. Sealey Anticipation
1. Merits
Petitioner contends that Sealey discloses a papermaking belt having a
nonwoven top layer laminated to a woven bottom layer. Pet. 70 (citing
Ex. 1024, Abstract, ¶¶ 27, 136, 139). Petitioner contends that “[t]he
weaving pattern of the woven layer would be understood as having ridges
and valleys” and that “[t]he ridges are in a first x-y plane and the valleys are
in a second x-y plane.” Pet. 72 (citing Ex. 1024 ¶¶ 138, 139, Figs. 8, 11).
Petitioner contends that “[a] void is created between the valleys of the
bottom woven layer and the top nonwoven layer.” Pet. 73 (citing Ex. 1024
¶ 34, Fig. 11). Petitioner relies on Sealey’s disclosure that the nonwoven
and woven layers “have non-planar, irregularly shaped surfaces that when
laminated together only bond together where the two layers come into direct
contact” and that “the partial and uneven bonding between the two layers
results in formation of air channels 320 that extend in the X-Y plane of the
fabric or belt 300.” Id. (quoting Ex. 1024 ¶ 139). Petitioner contends that
“[a] person of ordinary skill in the art would appreciate that the air channels
are voids.” Id. (citing Ex. 1024, Fig. 8).
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Petitioner provides the following annotation of Sealey Figure 8.

Sealey Figure 8 is a photo showing air channels formed in the fabric or belt
described in Sealey. Ex. 1024 ¶¶ 125, 139. In Petitioner’s annotation,
Petitioner contends that a blue arrow identifies “an elevated suspension of
the nonwoven layer that extends between the ridges (and over the valleys) of
the woven layer.” Pet. 74.
Patent Owner argues that Petitioner does not show where Sealey
teaches a “plurality of woven ridges” or a “plurality of woven valleys,” as
recited in claim 1, and does not identify the two “x-y plane[s]” recited in the
claim. Prelim. Resp. 35–40, 47. Patent Owner argues that Sealey describes
a substantially monoplanar woven layer. Id. at 45, 48 (Patent Owner’s
annotation of Sealey Figures 8, 11 identifying essentially coplanar first and
second surfaces). Patent Owner argues that the air channel shown in Sealey
Figures 8 and 11 is “below any second x-y plane defined by a woven
valleys” and “results from the ordinary spacing between yarns that would be
present in any weave.” Id. at 47, 48. Relying on Sealey’s disclosure that the
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nonwoven layer extends “partially through” the woven layer, Patent Owner
argues that Sealey does not disclose the claimed void spaces or suspended
portions. Id. at 48–49 (citing Ex. 1024 ¶ 136, Fig. 8).
We agree with Patent Owner that Petitioner’s contentions regarding
Sealey and claim 1 are deficient. Petitioner does not identify where the
claimed ridges, valleys, and planes are disclosed in Sealey. Pet. 70–75;
Prelim. Resp. 35–39, 47. Although Petitioner asserts that, in Sealey, “[t]he
weaving pattern of the woven layer would be understood as having ridges
and valleys” and that “[t]he ridges are in a first x-y plane and the valleys are
in a second x-y plane” (Pet. 72), Petitioner does not specify where such
ridges, valleys, and x-y planes are disclosed. Petitioner directs us to
Sealey’s disclosure of “air channels 320 that extend in the X-Y plane of the
fabric or belt” (Pet. 73 (quoting Ex. 1024 ¶ 139)) and annotates Sealey
Figure 8 with a blue arrow identifying an alleged “elevated suspension of the
nonwoven layer” (Pet. 74–75). But Petitioner’s arguments and evidence are
not sufficient to show that Sealey’s fabric or belt has the ridges, valleys, and
x-y planes recited in claim 1.
The deficiencies in Petitioner’s contentions for independent claim 1,
as discussed above, are not remedied by its contentions for dependent claims
2, 4, 5, 8, 9, 11, and 13. Pet. 75–78. For these reasons, we determine that
Petitioner has not shown it is more likely than not that Sealey anticipates
claims 1, 2, 4, 5, 8, 9, 11, and 13.
2. Section 325(d)
Applying the Advanced Bionics two-part framework, we determine
that Sealey is the same as the art previously considered by the Office during
examination. See Prelim. Resp. 21–23, 33–34 (Patent Owner’s § 325(d)
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argument concerning Sealey). The Examiner rejected application claim 17
(corresponding to claim 1 of the ’444 Patent) as anticipated by Sealey.
Ex. 1002, 55. In response, applicant argued that “Sealey discloses a woven
layer that is substantially monoplanar” and “there are no voids between the
woven and nonwoven layers.” Id. at 42 (providing annotation of Sealey
Figure 10 with red dashed line showing single plane). Following this
response, the Examiner allowed application claims 17–26 and 34–36
(corresponding to claims 1–13 of the ’444 Patent). See id. at 13 (Examiner’s
indication of allowable subject matter).
Under the second part of the Advanced Bionics framework, we
determine that Petitioner has not demonstrated persuasively that the Office
erred in its evaluation of Sealey in a manner material to the patentability of
the challenged claims. The Petition includes no substantive discussion of
the prosecution history and does not address whether the Examiner erred in
evaluating Sealey. For the first time in the Reply, Petitioner argues that the
Examiner and Patent Owner do not appear to have considered Sealey’s
teaching that “both the extruded polymer netting . . . and woven layer . . .
have non-planar, irregularly shaped surfaces.” Pet. Reply 3 (quoting
Ex. 1024, ¶ 139; emphasis is Petitioner’s).
We agree with Patent Owner that Sealey paragraph 139 is a
description of Sealey Figure 8, which was substantively addressed during
prosecution. PO Sur-reply 4; Ex. 1002, 42. Applicant argued that, in
Sealey, “there are no voids between the woven and nonwoven layers,” and
“[t]he lack of voids is illustrated in FIG. 8 of Sealey.” Ex. 1002, 42. After
considering this argument, the Examiner allowed the claims. Ex. 1002, 13,
36, 42 (notice of allowability in response to applicant’s amendment and
remarks distinguishing Sealey). Thus, the prosecution history does not
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support Petitioner’s assertion that the Examiner did not consider Sealey’s
paragraph 139 teaching about non-planar, irregularly shaped surfaces.
Petitioner identifies no other error in the Examiner’s evaluation of Sealey.
F. JP ’238 Anticipation
1. Merits
Petitioner contends that JP ’238 discloses a papermaking belt with a
batt layer laminated to a base material. Pet. 83 (citing Ex. 1025 ¶ 9).10
Petitioner contends that the base material includes top layer 21 made from a
nonwoven material and bottom layer 22 that is a woven fabric having
“ridges in a first x-y plane and valleys in a second x-y plane.” Pet. 84–85
(citing Ex. 1025 ¶¶ 11, 21–23, Figs. 1, 2). Petitioner contends that the top
surface of top layer 21 “can contact a web” and the bottom surface of the
bottom layer 22 “can contact a machine surface.” Pet. 85 (citing Ex. 1025
¶¶ 19, 25–28).
Patent Owner argues that JP ’238 discloses web and machine
contacting surfaces formed by felt batt layers, not the woven and nonwoven
layers, as required by claim 1. Prelim. Resp. 59–60 (citing Ex. 1025 ¶¶ 15,
16, Fig. 1).
We agree with Patent Owner. Claim 1 recites in pertinent part:
the top surface of the first layer forming a portion of the web
contacting surface of the belt, and the bottom surface of the
second layer forming the machine contacting surface of the belt,
wherein the first layer comprises a nonwoven material and the
second layer comprises a plurality of woven ridges.

10 In several instances, the Petition cites JP ’238 using Exhibit 1016 instead
of Exhibit 1025. Pet. 83, 85, 89. We cite the correct exhibit number.
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Ex. 1001, 18:5–10. The above-quoted claim limitation requires that the top
surface of the nonwoven layer forms a portion of “the web contacting
surface of the belt” and the bottom surface of the woven layer forms “the
machine contacting surface of the belt.” Id.
Patent Owner provides the following annotation of JP ’238 Figure 1:

Prelim. Resp. 60. JP ’238 Figure 1 shows papermaking belt 10. Patent
Owner’s annotations correctly identify, from top to bottom, batt layer 30,
first reinforcing material 21, second reinforcing material 22, and another batt
layer 30. Id.; Ex. 1025 ¶ 29. Petitioner identifies layer 21 as the claimed
first layer comprising a nonwoven material and layer 22 as the claimed
second layer comprising a plurality of woven ridges. Pet. 85. As shown in
JP ’238 Figure 1, however, layers 21 and 22 are sandwiched between batt
layers 30. Ex. 1025, Abstract (batt layer is laminated on a substrate
composed of multiple sheets of reinforcing materials); ¶ 4 (“The
papermaking felt includes a base material and a bat[t] layer, and the bat[t]
layer includes a wet paper placement side layer and a press side layer.”);
¶¶ 9, 15, 29.
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After reviewing the portions of JP ’238 cited by Petitioner, we find
insufficient support for Petitioner’s contention that that the top surface of top
layer 21 “can contact a web” and the bottom surface of the bottom layer 22
“can contact a machine surface.” Pet. 85 (citing Ex. 1025 ¶¶ 19, 25–28). JP
’238 discloses polishing the surface of the first reinforcing material on the
wet paper web side to adjust the void volume (Ex. 1025 ¶¶ 19, 25, Fig. 4),
but does not disclose that this polished surface contacts the web.
The deficiencies in Petitioner’s contentions for independent claim 1,
as discussed above, are not remedied by its contentions for dependent claims
2–4, 8, 9, 11, and 12. Pet. 86–89. For these reasons, we determine that
Petitioner has not shown it is more likely than not that JP ’238 anticipates
claims 1–4, 8, 9, 11, and 12.
2. Section 325(d)
Applying the Advanced Bionics two-part framework, we determine
that JP ’238 is the same as the art previously considered by the Office during
examination. See Prelim. Resp. 28–30, 33–34 (Patent Owner’s § 325(d)
argument concerning JP ’238). The ’444 Patent claims the benefit of a
Patent Cooperation Treaty (“PCT”) application, which was examined by the
PCT International Search Authority (“ISA”) in Singapore. Ex. 1001,
code (86); Ex. 1002, 251–257. In a written opinion, the ISA determined that
application claims 17–26 are novel and involve an inventive step over
JP ’238. Ex. 1002, 254–256 (reference D1 is JP ’238). Specifically, the
ISA’s written opinion states:
D1 differs from claim 17 in that D1 fails to disclose that
the top surface of the first non-woven layer forming a portion of
the web contacting surface and the bottom surface of the second
woven layer forming a portion of the machine contacting surface.
D1, instead, discloses web and machine contacting surface
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formed by batt layers (Ref. 30, Fig. 1) comprised in the felt.
Starting from D1, it is not obvious to modify the papermaking
felt to devoid of the batt layers. None of the cited prior art, either
taken alone or in combination, teaches or suggests the invention
of claim 17. Claim 17 therefore involves an inventive step.
Id. at 255–256.11 During the U.S. national phase, applicant submitted a copy
of the ISA’s written opinion as part of its request to participate in the
Global/IP5 Patent Prosecution Highway pilot program. Id. at 84, 87, 94–
100. Applicant cited JP ’238 in an Information Disclosure Statement
(“IDS”) and provided a translation. Id. at 104, 210–226. The Examiner
initialed the citation of JP ’238, indicating it was considered. Id. at 64.
Under the second part of the Advanced Bionics framework, we
determine that Petitioner has not demonstrated that the Office erred in its
evaluation of JP ’238 in a manner material to the patentability of the
challenged claims. The Petition includes no substantive discussion of the
prosecution history and does not address whether the Office erred in
evaluating JP ’238. For the first time in the Reply, Petitioner argues that
“the claims were never rejected over JP ’238” and “[t]he mere fact that
JP ’238 was cited in an IDS, but not applied in any rejections, is insufficient
to trigger the 35 U.S.C. § 325(d) bar.” Pet. Reply 7.
We agree with Patent Owner that Petitioner fails to address the
substantive discussion of JP ’238 in the ISA’s written opinion. PO Sur-reply
5–6; Ex. 1002, 255–256. The written opinion provides specific reasons why
application claim 17 (corresponding to claim 1 of the ’444 Patent) is novel
and involves an inventive step over JP ’238. Ex. 1002, 255–256. Petitioner
identifies no error in the ISA’s evaluation of JP ’238.

11 PCT application claims 17–26 correspond to claims 1–10 of the ’444
Patent. Ex. 1002, 18, 85.
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G. Anticipation by Alleged Sales
1. Merits
As support for its contention that forming fabrics MS015, LB003, and
LB004 were “on sale” before the effective filing date of the ’444 Patent,
Petitioner submits the declaration of it employee, Denise Weyers (Ex. 1009),
along with invoices showing sales of these fabrics to GP in 2013 and 2015
(Exs. 1003–1005). As support for its contention that forming fabrics
MS015, LB003, and LB004 meet the limitations of challenged claims 1–4,
6, 7, 9, and 11–13, Petitioner submits a declaration of its employee Timothy
Lamers. Ex. 1013. Mr. Lamers relies on analyses performed by Petitioner’s
Customer Service Lab on samples of MS015, LB003, and LB004 returned
by GP (Exs. 1010–1012) and on measurements and photographs prepared by
Petitioner’s employee, Timothy Schmidt (Exs. 1014–1016). Exhibit 1014
shows measurements of the MS015 sample returned by GP, and Exhibits
1015 and 1016 show measurements of replicates of the LB003 and LB004
fabrics sold to GP. Ex. 1013 ¶¶ 9, 10.
Petitioner contends that forming fabrics MS015, LB003, and LB004
each have a nonwoven top layer and a woven bottom layer. Pet. 15–22.
Petitioner contends that “the interlacing of the filaments . . . of the bottom
layer results in nonplanar valleys and ridges, this being clearly evident from
the cross-sectional figures of MS015, LB003, and LB004.” Pet. 23 (citing
Exs. 1013–1015). Petitioner presents annotated cross-sectional images,
which Petitioner contends show “the ridges and valleys of the first and
second x-y planes according to claim 1.” Pet. 23–26. One such annotated
image is reproduced below.
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Pet. 24. Petitioner represents that the above figure is a cross-sectional image
of MS015 forming fabric. Pet. 23–24. Petitioner’s annotations identify a
first x-y plane, a second x-y plane, and a void. Petitioner relies on the same
annotated cross-sections to show “the void regions and suspended portions.”
Pet. 27–29.
Patent Owner argues that Petitioner does not identify a “plurality of
woven ridges” or a “plurality of woven valleys” in the alleged sale fabrics.
Prelim. Resp. 35–38. Patent Owner argues that Petitioner’s images depict
woven structures that are “substantially monoplanar” and that the alleged
sales “do not disclose the nonwoven layer having any ‘void spaces’ or
‘suspended portions’ lying above woven valleys, as claimed.” Id. at 49–50.
Patent Owner argues that Mr. Lamers’ testimony is biased, uncorroborated,
unreliable expert testimony of a lay witness, and hearsay to the extent it
relies on testing performed by another employee, Mr. Schmidt. Id. at 67–83.
Patent Owner argues that Petitioner’s evidence shows delamination,
adhesive failure, and damage to the MS015 sample and there are “serious
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doubts” as to whether it accurately represents the MS015 product as sold in
2013. Id. at 71–72. Patent Owner argues that Petitioner has not established
that the re-creations of the LB003 and LB004 fabrics are the same as the
fabrics that were sold before the filing date of the ’444 Patent. Id. at 72–73.
After considering the parties’ arguments and evidence, we determine
that the Petition does not meet the threshold for institution of a post grant
review based these alleged sales for several reasons.
First, we agree with Patent Owner that Petitioner does not identify a
“plurality of woven ridges” or a “plurality of woven valleys” in the alleged
sale fabrics. Prelim. Resp. 35–38; Pet. 23–26. Petitioner provides cross-
sectional images of the MS015, LB003, and LB004 fabrics with lines drawn
to identify what Petitioner contends are first and second x-y planes.
Pet. 24–26. But Petitioner does not provide annotations or other contentions
sufficient to identify a “plurality of woven ridges” or a “plurality of woven
valleys” in the alleged sale fabrics. The paragraphs of Mr. Lamers’
declaration that address ridges and valleys do nothing more than identify the
weave pattern, regurgitate the claim language, and refer to Petitioner’s
annotated cross-sectional images. Ex. 1013 ¶¶ 20, 21, 42, 43, 63, 64. The
line labeled “second x-y plane” intersects various features, and Petitioner
and its declarants do not explain how or why they determined the position of
the alleged “second x-y plane.” Absent such an explanation, we cannot
determine whether Petitioner’s annotated images show “a plurality of woven
ridges lying in a first x-y plane and a plurality of woven valleys lying in a
second x-y plane below the first x-y plane,” as recited in claim 1.
Furthermore, Petitioner does not provide any cross-sectional images of the
MS015, LB003, and LB004 fabrics that are not obscured by Petitioner’s
annotations. The line Petitioner identifies as a “first x-y plane” covers the
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interface between the nonwoven and woven layers, and the line Petitioner
identifies as a “second x-y plane” overlaps features of the woven layer.
Pet. 24–26. Petitioner’s obscured images make it difficult to assess whether
the alleged sale fabrics embody the claim limitations.
Second, we agree with Patent Owner that Petitioner has not shown
persuasively that the samples it relies upon accurately represent the fabrics
that were allegedly sold to GP in 2013 and 2015. In the case of MS015,
Patent Owner is correct that Petitioner’s evidence shows delamination,
adhesive failure, and damage to the sample that was measured and
photographed. According to Mr. Lamers, the MS015 sample that was
measured and photographed (Ex. 1014) is from the belt that was returned by
GP. Ex. 1013 ¶ 9. Mr. Lamers testifies that to his “best understanding and
belief, no other alteration or testing was made to the sample(s) from the
point of sale to Georgia-Pacific as described in the Albany invoice
(Ex. 1003) and the evaluation and measurement of heights” described in his
declaration and Exhibit 1014. Id. Mr. Lamers’ testimony is contradicted by
Exhibit 1010—the “MS015 Belt Analysis” prepared by Petitioner’s
Customer Service Lab when the belt was returned by GP in 2013. Ex. 1013
¶ 7. According to that report, the MS015 belt “ran well for roughly 4.50
hours, and then it started to delaminate in two areas on the backside of the
belt.” Ex. 1010, 1. The report states that “[i]n the seams near the center of
the belt, it appears that the TPU sheet [the alleged ‘nonwoven’ layer] has
shifted while the adhesive did not move” and “[a]s a result the adhesive is
evident in the center of the TPU holes.” Id. The report includes captioned
photographs evidencing damage, wear, abrasion, delamination, adhesive
failure, and attempted repairs. Id. at 3–7. Contrary to Mr. Lamers’
representation, Exhibit 1010 shows that the MS015 sample that was
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measured and photographed in Exhibit 1014 is not in the same condition as
when it was sold in 2013. Petitioner makes no attempt to explain how and
why the sample it tested accurately represents the fabric that was sold, when
the sample was taken from a worn and damaged belt that experienced
delamination and adhesive failure.
In the case of LB003 and LB004, we agree with Patent Owner that
Petitioner has not shown sufficiently that the recreations of the LB003 and
LB004 fabrics are the same as the fabrics that were sold before the filing
date of the ’444 Patent. Petitioner acknowledges that the images of LB003
and LB004 in the Petition are “replicate fabrics.” See, e.g., Pet. 18.
Mr. Lamers testifies that under his “direct supervision and control, and with
the knowledge of the manufacturing of LB003 and LB004, replicate fabrics
of LB003 and LB004 were made by Albany for the purposes of this petition
for post grant review.” Ex. 1013 ¶ 10. According to Mr. Lamers, “[t]hese
replicates accurately represent the forming fabrics LB003 and LB004 sold to
GP.” Id. We find that Mr. Lamers’ testimony is merely conclusory and
deserves little weight. Mr. Lamers provides no explanation of how he
reached the conclusion that the replicates accurately represent the sold
fabrics. Aside from his testimony that both the replicates and the sold
fabrics have a nonwoven layer thickness of 1.00 mm (Ex. 1013 ¶¶ 35, 56),
Mr. Lamers makes no other comparison between the replicates and the sold
fabrics. Aside from Mr. Lamers’ conclusory testimony, Petitioner presents
no other evidence that the replicates accurately represent the fabrics sold to
GP in 2015.
The deficiencies in Petitioner’s contentions for independent claim 1,
as discussed above, are not remedied by its contentions for dependent claims
2–4, 6, 7, 9, and 11–13. Pet. 30–43. For these reasons, we determine that
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Petitioner has not shown it is more likely than not that the MS015, LB003,
and LB004 fabrics sold to GP anticipate claims 1–4, 6, 7, 9, and 11–13.
2. Section 325(d)
Patent Owner argues that the alleged sales are cumulative to art and
arguments already considered by the Office, including Lefkowitz and
Sealey. Prelim. Resp. 23. Patent Owner argues that Petitioner’s cross-
sectional images of MS015, LB003, and LB004 are “visually
indistinguishable” from Lefkowitz Figure 6 and Sealey Figures 8 and 11. Id.
at 23–24. According to Patent Owner, the alleged sale fabrics and Sealey
both utilize a similar 5-shed weave pattern in the woven layer. Id. at 24.
Petitioner responds that “even where the woven layers of the sales
fabrics have the same or similar weave pattern as Sealey and Lefkowitz
(e.g., 5-shed), larger distances are apparent in the sales weaves between
warp and weft fibers versus Sealey and Lefkowitz.” Pet. Reply 5. Petitioner
contends that “[t]hese larger distances result in different ridge and valley
heights and first and second x-y planes, thereby impacting other claim
elements as well, such as void spaces.” Id. Petitioner asserts that, because
of this difference in void height, the alleged sales, but not Sealey and
Lefkowitz, are relied upon as anticipatory references for dependent claims 6
and 7. Id.
Applying the Advanced Bionics two-part framework, we find that
Petitioner does not sufficiently distinguish the alleged sales from the
disclosures of Sealey and Lefkowitz, which were expressly considered by
the Examiner, as discussed above. Petitioner does not deny that “the woven
layers of the sales fabrics have the same or similar weave pattern as Sealey
and Lefkowitz.” Pet. Reply 5. Although Petitioner disputes Patent Owner’s
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contention that the alleged sale fabrics are “visually indistinguishable” from
Sealey and Lefkowitz and mentions “varying aperture widths” and different
“contact points” (id.), Petitioner does not identify any specific difference as
it pertains the limitations of claim 1. For example, Petitioner does not
provide annotations or other contentions sufficient to identify a difference
between the alleged sale fabrics and the fabrics disclosed in Sealey and
Lefkowitz as it pertains the recitations of a “plurality of woven ridges” and a
“plurality of woven valleys” in claim 1.
Turning to dependent claims 6 and 7, we are not persuaded by
Petitioner’s attempt to distinguish the alleged sales from Sealey and
Lefkowitz based on void height. Pet. Reply 5. Petitioner does not assert that
the fabrics disclosed in Sealey and Lefkowitz have a void height outside the
ranges recited in claims 6 and 7. See Ex. 1001, 18:33–37 (claims 6 and 7).
Instead, Petitioner merely asserts that Sealey “does not provide specific
measurements” for void height. Pet. 79. Petitioner’s argument does not
persuade us that the alleged sales are not substantially the same as Sealey
and Lefkowitz, as it pertains to dependent claims 6 and 7. Thus, with
respect to the alleged sales, we find that substantially the same art or
arguments were previously presented to the Office.
Addressing the second part of the Advanced Bionics framework,
Petitioner relies on the same arguments for the alleged sales as it presented
for Sealey and Lefkowitz. Pet. Reply 4–5. For the reasons discussed above,
we determine that Petitioner has not demonstrated that the Office erred in its
evaluation of Sealey or Lefkowitz in a manner material to the patentability
of the challenged claims.
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H. Eagles Anticipation
1. Merits
Petitioner contends that Eagles discloses a papermaking belt having a
top nonwoven layer laminated to a bottom woven layer. Pet. 51–52, 55–56
(citing Ex. 1017, Abstract, ¶¶ 86, 87, Figs. 4A, 4B). Petitioner contends that
Eagles Table 2 lists commercial fabrics manufactured by Petitioner,
including J5076, Prolux U5076, and Electrotech 55LD. Id. at 53–55 (citing
Ex. 1017 ¶ 80). Petitioner submits a second declaration of Mr. Lamers
describing these fabrics and similar fabrics manufactured by Petitioner
(Ex. 1018) and measurements and photographs of the fabrics (Ex. 1019).
Petitioner contends that J5076 fabric “has a 5-shed weave pattern” and that
“[a] 5-shed weave pattern has ridges and valleys.” Pet. 53 (citing Ex. 1018
¶ 8). Petitioner illustrates its contention with the following figure.

Pet. 53–54 (citing Ex. 102312). The above figure shows a 5 shed weave
pattern. Petitioner’s blue arrows identify what it contends are a ridge (top
arrow) and a valley (bottom arrow). Id.
Petitioner contends that “[a] person of ordinary skill in the art would
appreciate that the woven structure (bottom layer) structures disclosed in

12 Reprint of J. Plantikow, Forming Fabric Design Technology Continues to
Evolve at Rapid Pace, Pulp and Paper, Oct. 1984.
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Table 2 laminated to an extruded (top) nonwoven layer would result in a
void between the two layers at least because of the nonplanar ridge and
valley conformation of the bottom woven layer and the distinctive nature of
each layer.” Pet. 57 (citing Ex. 1017 ¶¶ 54, 55, 60–63, Table 2). Petitioner
further contends that “[t]he belt would also have suspended portions of the
top layer elevated in the z-direction over the valley portions of the bottom
layer.” Id. (citing Ex. 1017 ¶¶ 52, 86, 87, 97, Table 2).
Patent Owner argues that Eagles does not expressly describe any
ridges, valleys, void spaces, or suspended portions. Prelim. Resp. 52, 54.
Patent Owner argues that the fabrics listed in Eagles Table 2 are
substantially monoplanar, lacking woven ridges and valleys, and that
Petitioner provides no evidence that a skilled artisan would have understood
these fabrics to have ridges and valleys. Id. at 53–57. In addition, Patent
Owner argues that Eagles does not indicate whether the fabrics listed in
Table 2 were publicly available, and Petitioner has not alleged that the
fabrics were on sale. Id. at 54, 55 n.7. Patent Owner argues that Petitioner
has not shown that using one of the fabrics listed in Eagles Table 2 as the
woven layer would necessarily or inherently result in the claimed void
spaces and suspended portions when the woven layer is laminated to a
nonwoven layer. Id. at 51–53, 57–59.
We agree with Patent Owner that Petitioner has not shown sufficiently
that Eagles anticipates claim 1. Petitioner’s evidence is not sufficient to
support its contentions that “[a] person of ordinary skill in the art would
appreciate that the woven structure (bottom layer) structures disclosed in
Table 2 laminated to an extruded (top) nonwoven layer would result in a
void between the two layers at least because of the nonplanar ridge and
valley conformation of the bottom woven layer and the distinctive nature of
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each layer” and “[t]he belt would also have suspended portions of the top
layer elevated in the z-direction over the valley portions of the bottom
layer.” Pet. 57 (citing Ex. 1017 ¶¶ 52, 54, 55, 60–63, 86, 87, 97, Table 2).
The cited portions of Eagles describe the top and bottom layers of a
multilayer belt and how the layers are joined together. Ex. 1017 ¶¶ 52, 54,
55, 60–63, 86, 87, 97, Table 2. Petitioner does not direct us to any
description in Eagles of ridges, valleys, void spaces, or suspended portions.
Petitioner offers no testimony to support its assertion about what a
person of ordinary skill in the art would appreciate. Mr. Lamers testifies that
“[t]he J5076 fabric has a weave pattern with both ridges and valleys”
(Ex. 1018 ¶ 9), but that testimony is from the perspective of an employee of
Petitioner with inside knowledge about the design of its products. Id. ¶ 7 (“I
am familiar with J5076 as I worked with this fabric design for the creation of
Albany’s first laminated samples, which then lead to the first laminated
production belt.”); id. ¶ 12 (“To arrive at this data [regarding void height], I
reviewed J5076 product information from 2009 to the present.”).
Mr. Lamers does not testify about the fabrics listed in Eagles Table 2 from
the perspective of a person of ordinary skill in the art. Petitioner does not
present evidence sufficient to show that a person of ordinary skill in the art
would have known or appreciated that J5076 or any of the other fabrics
listed in Eagles Table 2 has ridges, valleys, or a void height. Nor does
Petitioner establish that the fabrics were on sale, in public use, or otherwise
publicly available or that the information about the fabrics was publicly
available.
Furthermore, Petitioner does not show sufficiently that using one of
the fabrics listed in Eagles Table 2 as the woven layer would necessarily or
inherently result in the claimed void spaces and suspended portions when the
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woven layer is laminated to a nonwoven layer. Mr. Lamers determines void
heights based solely on information about the woven fabrics. Ex. 1018
¶¶ 11–16; Ex. 1019. Eagles discloses that the woven and nonwoven layers
can be joined together using a variety of techniques, including an adhesive,
heat welding, ultrasonic welding, and laser fusion. Ex. 1017 ¶¶ 86, 97.
Petitioner does not show that each of these techniques would necessarily
result in the void spaces and suspended portions recited in the claim.
The deficiencies in Petitioner’s contentions for independent claim 1,
as discussed above, are not remedied by its contentions for dependent claims
2–9, 11, and 12. Pet. 58–67. For these reasons, we determine that Petitioner
has not shown it is more likely than not that Eagles anticipates claims 1–9,
11, and 12.
2. Section 325(d)
Applying the Advanced Bionics two-part framework, we determine
that Eagles is the same as the art previously considered by the Office during
examination. See Prelim. Resp. 26–28, 33–34 (Patent Owner’s § 325(d)
argument concerning Eagles). Applicant disclosed Eagles in an IDS, and the
Examiner initialed the citation, indicating that Eagles was considered.
Ex. 1002, 22, 30. Applicant also disclosed U.S. Patent No. 9,957,665, which
issued from the application that published as Eagles, and the Examiner
initialed the citation, indicating that the Eagles patent was also considered.
Id. at 63.
As discussed above, the ’444 Patent claims the benefit of a PCT
application. Ex. 1001, code (86). Eagles was substantively addressed in an
anonymous Third Party Observation during prosecution of the PCT
application. Ex. 2002, 1–2. The Third Party Observation includes a list of
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the most relevant passages and drawings, as well as a brief explanation of
the relevance of Eagles. Id. at 2. According to the Third Party Observation,
Eagles discloses a multilayer belt for tissue-making, where “[t]he belt
comprises a machine side bottom woven layer comprising yams interwoven
to form ridges and valleys lying in different x-y planes.” Id. The Third
Party Observation asserts that “per definition” a void exists between the
extruded polymeric top layer and the woven bottom layer “because of the
ridge valley construction of the woven layer coupled with the distinctive
nature of each layer.” Id. According to the Third Party Observation, Eagles
“inherently discloses a void height falling within the claimed range in view
of the woven products and size of the warp threading in Table 2.” Id. The
Third Party Observation asserts that Eagles discloses independent claim 17,
which corresponds to claim 1 of the ’444 Patent. Id.; Ex. 1002, 18, 85.
Applicant disclosed the Third Party Observation in an IDS. Ex. 1002,
31. The Examiner lined through the citation “because it is an incomplete
citation (no author or date).” Id. at 14, 23. Nevertheless, the Examiner
stated that the Third Party Observation “has been placed in the application
file, and the information referred to therein has been considered as to the
merits.” Id. at 14.
Although Petitioner suggests that Eagles was not substantively
examined (Pet. Reply 6), Petitioner’s suggestion is belied by the file history,
which indicates that the Examiner substantively considered both Eagles and
the Third Party Observation. Ex. 1002, 14, 22, 23. Petitioner argues that the
Third Party Observation cited Eagles Table 2 “only in the context of
inherently anticipated warp threading to establish a void height” and that
Petitioner’s “evidence regarding weave patterns of the Table 2 fabrics” is
“material information not considered by the examiner.” Pet. Reply 6. We
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disagree. As discussed above, Petitioner offers no testimony to support its
assertion about what a person of ordinary skill in the art would appreciate
from reviewing Eagles. Petitioner does not show sufficiently that using one
of the fabrics listed in Eagles Table 2 as the woven layer would necessarily
or inherently result in the claimed void spaces and suspended portions when
the woven layer is laminated to a nonwoven layer. For these reasons,
Petitioner does not show that its evidence regarding weave patterns of the
Table 2 fabrics is material to patentability.
Under the second part of the Advanced Bionics framework, we
determine that Petitioner has not demonstrated that the Office erred in its
evaluation of Eagles in a manner material to the patentability of the
challenged claims. Petitioner does not attempt to demonstrate error apart
from its challenge on the merits, which does not persuade us for the reasons
discussed above.
I. Obviousness Grounds
1. Merits
Petitioner challenges dependent claims 3, 5–8, 10, 12, and 13 based
on various obviousness grounds. Pet. 4–5. The deficiencies in Petitioner’s
anticipation grounds with respect to independent claim 1, as discussed
above, are not further addressed or otherwise remedied by Petitioner’s
obviousness grounds for these dependent claims. Pet. 44–50, 67–69, 79–83.
Furthermore, we agree with Patent Owner that the Petition lacks
sufficient argument and evidence to show a motivation to combine the prior
art relied upon to show obviousness. Id.; Prelim. Resp. 62–66. In some
cases, Petitioner invokes design choice or routine, customary, or obvious
choice, without providing an explanation or citing evidence to establish why
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a person of ordinary skill in the art would have made that choice. Pet. 48,
50, 68, 80, 83. In other cases, Petitioner provides no reasoning whatsoever
to support Petitioner’s proposed combinations of prior art elements. Pet. 69
(claim 13; Eagles, alleged sales); Pet. 79, 81 (claims 3, 12; Sealey, Eagles).
Merely stating that a claim limitation is a design choice does not make it
obvious. Petitioner “must offer a reason for why a person of ordinary skill
in the art would have made the specific design choice.” See Cutsforth, Inc.
v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (requiring the
Board to offer such a reason); see also KSR, 550 U.S. at 418 (obviousness
inquiry requires consideration of whether there was “an apparent reason to
combine the known elements in the fashion claimed by the patent at issue”).
Petitioner’s obviousness grounds are deficient for this reason, separate
and independent from the deficiencies discussed above for Petitioner’s
anticipation grounds.
Accordingly, we determine that Petitioner has not shown it is more
likely than not that dependent claims 3, 5–8, 10, 12, and 13 are unpatentable
for obviousness.
2. Section 325(d)
Patent Owner argues that Stone, which Petitioner relies upon as a
secondary reference for claim 10, is cumulative of another reference—
Aberg13—that was considered during prosecution. Prelim. Resp. 31.
Petitioner disputes that contention, arguing that Stone does not disclose
subject matter (non-discrete layers) applicant relied upon to distinguish
Aberg. Pet. Reply 7.

13 Ex. 2001, Aberg et al., US 2011/0272112, published Nov. 10, 2011.
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We disagree that Petitioner has sufficiently distinguished the
disclosure of Stone from that of Aberg. Patent Owner is correct that
Petitioner relies on Stone for the same subject matter—polyphenylene
sulfide (“PPS”) as a woven layer material—for which the Examiner relied
on Aberg. Prelim. Resp. 31–32; Pet. 49–50 (asserting that claim 10 is
unpatentable because it would have been obvious to make the woven layer
from PPS, citing Stone (Ex. 1020)); Ex. 1002, 56–57 (Examiner’s rejection
of application claim 2614 asserting that it would have been obvious to make a
papermaking belt using the polymeric materials disclosed by Aberg for the
woven layer, including PPS). Even if Petitioner is correct that applicant’s
argument about Aberg does not apply to Stone (Pet. Reply 7), that does not
sufficiently distinguish Stone. Petitioner relies upon Stone solely to teach
the subject matter of dependent claim 10, which recites that the woven layer
is formed from PPS. Pet. 49–50, 67–68, 82–83.
Applying the Advanced Bionics two-part framework and for the
reasons discussed above, we determine that the art relied upon in Petitioner’s
obviousness grounds—the alleged sales, Eagles, Stone, and Sealey—is
either the same or substantially the same as the art previously considered by
the Office during examination. Under the second part of the Advanced
Bionics framework, we determine that Petitioner has not demonstrated that
the Office materially erred in its evaluation of this art. Petitioner does not
attempt to demonstrate error apart from its challenges on the merits, which
do not persuade us for the reasons discussed above.

14 Application claim 26 corresponds to claim 10 of the ’444 Patent.
Ex. 1002, 18.
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III. SUMMARY AND CONCLUSION
For the above reasons, we determine that Petitioner has not
established that it is more likely than not that it would prevail in showing
that claims 1–13 of the ’444 Patent are unpatentable on the grounds asserted
in the Petition and that we should also exercise our discretion under
35 U.S.C. § 325(d) to deny the Petition, which provides an additional reason
for denying institution.
IV. ORDER
It is
ORDERED that, the Petition is denied, and no trial is instituted.

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Patent 10,584,444 B2
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For PETITIONER:

Kathleen Ehrhard
Brian Lemon
McCARTER & ENGLISH, LLP
kehrhard@mccarter.com
blemon@mccarter.com

For PATENT OWNER:

Blair A. Silver
Marc Cooperman
Camille Sauer
BANNER & WITCOFF, LTD.
bsilver@bannerwitcoff.com
mcooperman@bannerwitcoff.com
csauer@bannerwitcoff.com