Organik Kimya San. ve Tic. A.S.v.Rohm and Haas Company

Patent Trial and Appeal Board

May 27, 2015

08974763 (P.T.A.B. May. 27, 2015)

Trials@uspto.gov Paper 56
Tel: 571-272-7822 Entered: May 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ORGANIK KIMYA AS,
Petitioner,

v.

ROHM AND HAAS COMPANY,
Patent Owner.
____________

Case IPR2014-00185
Patent 6,020,435
_____________

Before TONI R. SCHEINER, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Organik Kimya AS (“Petitioner”) filed a Corrected Petition (Paper 10,
“Pet.”) to institute an inter partes review of claims 1–5 of U.S. Patent No.
6,020,435 (Ex. 1001, “the ’435 patent”). Patent Owner, Rohm and Haas
Company, did not file a Preliminary Response to the Petition.
In an Institution Decision (Paper 11, “Inst. Dec.”), an inter partes
review of claims 1–5 was instituted. After the Institution Decision, Patent
Owner filed a Response (Paper 30, “PO Resp.”) and a contingent Motion to
Amend Claims (Paper 31, “Mot. Amend”). In response, Petitioner filed a
Reply (Paper 36, “Pet. Reply”) and an Opposition to the Motion to Amend
(Paper 37). Patent Owner then filed a Reply to Petitioner’s Opposition
(Paper 45). Patent Owner also filed a Motion for Observations on Cross-
Examination of Petitioner’s Reply Witness, Dr. Robert K. Prud’homme
(Paper 48). Petitioner filed a Response to the Motion for Observations
(Paper 50). The parties presented arguments at an oral hearing (Paper 55,
“Tr.”).
1

The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S. C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has not shown by a preponderance of the
evidence that challenged claims 1–5 are unpatentable.

1
Petitioner and Patent Owner have filed Objections to Demonstrative
Exhibits (Papers 53 and 54). In this Final Written Decision, we have not
considered any arguments presented in the demonstrative exhibits that were
not presented previously and/or are not supported by the record.
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A. Related Matters
According to Petitioner and Patent Owner, the ’435 patent is involved
in a case titled Rohm and Haas Co. v. Organik Kimya San. Ve Tic. A.S.,
Case No. 13-cv-898-RGA, filed in the U.S. District Court for the District of
Delaware, currently stayed; and in an investigation at the U.S. International
Trade Commission titled In the Matter of Certain Opaque Polymers, Inv.
No. 337-TA-883 (USITC). Pet. 2–3; Paper 9, 2–3 (Related Matters).
B. The ’435 Patent (Ex. 1001)
The invention of the ’435 patent is directed to a process for preparing
multi-stage emulsion polymers having low dry-bulk density that are useful
in coating compositions, such as paints and paper coatings. Ex. 1001,
Abstract. Emulsion polymers, such as “hollow” or “voided” emulsion
polymers, “are generally prepared by swelling a core/shell emulsion polymer
in such a way that one or more voids form in the interior of the emulsion
polymer particle. These voids contribute, among other things, to the opacity
of coatings and films prepared with the hollow emulsion polymer.” Id. at
1:25–31. In some applications, it is desirable to minimize the weight of an
applied coating. Id. at 1:32–33. “Accordingly, it is desirable to provide
lightweight, low density additives for coatings, such as voided latex
particles.” Id. at 1:37–38. The ’435 patent explains that voided latex
polymers are prepared by several known processes, such as by swelling the
core of a core-shell emulsion polymer. Id. at 1:37–45. The ’435 patent
states:
The present invention seeks to overcome the deficiencies in the
previously known processes by providing low density voided
emulsion polymers and a process for preparing them.

Id. at 1:54–56.
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Specifically, the ’435 patent discloses preparing the multi-stage
emulsion polymer by sequential emulsion polymerization, which includes
charging the monomers that form the shell. Id. at 7:29–31. “At, or near, the
conclusion of charging the monomers which form the shell, the contents of
the reactor include the multistage polymer, water and unreacted monomer.”
Id. at 7:31–34. Under the conditions of emulsion polymerization, even if no
additional monomer or initiator is added, there is an appreciable free-radical
content in the system that keeps the polymerization process going until there
is no longer an appreciable free-radical content. Id. at 7:34–39. When no
appreciable free-radical content remains, no substantial amount of
polymerization will occur. Id. at 7:39–42.
The ’435 patent states: “We have discovered that by providing an
aqueous emulsion of the multi-stage emulsion polymer, monomer and
swelling agent under conditions wherein there is no substantial
polymerization of the monomer, we can enhance the extent of swelling of
the multistage emulsion polymer.” Id. at 7:56–60.
The ’435 patent explains that suitable swelling agents may be volatile
or fixed bases, or combinations thereof, and “include, are those which, in the
presence of the multistage emulsion polymer and monomer are capable of
permeating the shell and swelling the core.” Id. at 8:40–44.
C. Illustrative Claim
Independent claim 1 of the ’435 patent is illustrative of the claims at
issue:
1. A process for preparing emulsion polymer
particles comprising:
(a) providing an aqueous emulsion of
(i) multi-stage emulsion polymer, comprising a core
stage polymer and a shell stage polymer, wherein the
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core stage polymer comprises, as polymerized units,
from 5 to 100 percent by weight, based on the weight
of the core stage polymer, of hydrophilic
monoethylenically unsaturated monomer, and from 0
to 95 percent by weight, based on the weight of the
core stage polymer, of at least one nonionic
monoethylenically unsaturated monomer; and
wherein the shell stage polymer comprises, as
polymerized units, at least 50 percent by weight of
nonionic monoethylenically unsaturated monomer;
(ii) monomer at a level of at least 0.5 percent by
weight based on the weight of the multi-stage
emulsion polymer; and
(iii) swelling agent under conditions wherein there is
no substantial polymerization of the monomer; and
(b) reducing the level of monomer by at least fifty
percent.
D. The Prior Art
Toda et al., US 5,360,827, issued November 1, 1994 (Ex. 1003)
(“Toda”).

Touda et al., US 5,077,320, issued December 31, 1991 (Ex. 1004)
(“Touda”).

E. The Instituted Grounds of Unpatentability
Trial was instituted for Petitioner’s challenges to claims 1–5 of the
’435 patent on the following grounds:
Reference Basis ’435 Claims Challenged
Toda § 102(b) 1–5
Touda § 103(a) 1–5

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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable constructions in light of
the specification of the patent in which they appear. See 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1280 (Fed.
Cir. 2015). Under the broadest reasonable construction standard, claim
terms are presumed to be given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An inventor may rebut that presumption by providing a
definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). Stated differently, a “claim term will not receive its ordinary
meaning if the patentee acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specification or
prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002).
The parties’ arguments center on the construction of the following
claim term and phrase:
1. “swelling agent”
Claim 1 requires the inclusion of a swelling agent in the aqueous
emulsion. The Specification states,
Suitable swelling agents include, are those which, in the
presence of the multistage emulsion polymer and monomer, are
capable of permeating the shell and swelling the core. Swelling
agents may be aqueous or gaseous, volatile or fixed bases or
combinations thereof.
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Suitable swelling agents include volatile bases such as
ammonia, ammonium hydroxide, and volatile lower aliphatic
amines, such as morpholine, trimethylamine, and triethylamine,
and the like; fixed or permanent bases such as potassium
hydroxide, lithium hydroxide, zinc ammonium complex, copper
ammonium complex, silver ammonium complex, strontium
hydroxide, barium hydroxide and the like.

Ex. 1001 at 8:40–52. The Specification explains,
The core polymer of the multistage emulsion polymer
swells when the core is subjected to a basic swelling agent that
permeates the shell to at least partially neutralize the
hydrophilic-functionality of the core, preferably to a pH of at
least about 6 to at least about 10, and thereby result in swelling
by hydration of the hydrophilic core polymer.

Id. at 9:10–15.
Patent Owner asserts that that a person of ordinary skill in the art
would understand from the Specification that the term “swelling agent”
means
an ingredient that is capable of permeating the shell and
swelling the core of the multi-stage emulsion polymer
(ingredient (i) of step (a)) in the presence of the swelling
monomer (ingredient (ii) of step (a)) under conditions of no
substantial polymerization, in the process in which the
ingredient in question is being employed as a “swelling agent.”

PO Resp. 21. For example, according to Patent Owner, sodium hydroxide, a
fixed base, may be a swelling agent in some processes, while not in others.
Id. Patent Owner reasons that such a neutralizing agent “may or may not
also be a ‘swelling agent’ depending on the conditions of the specific
process where it is used.” Id. at 21–22. Patent Owner asserts, “[t]o contend
that ‘swelling agent’ does not have to involve any amount of swelling
ignores the functional aspects of the plain and ordinary meaning of term.”
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Id. at 27. Patent Owner’s position is supported by the Declaration of Patent
Owner’s declarant, F. Joseph Schork, Ph.D. See Ex. 2011 ¶¶ 68–70.
Petitioner asserts that the claims do not require the recited “swelling
agent” to be an ingredient that “‘must be capable of permeating the shell and
swelling the core.’” Pet. Reply 3. Petitioner asserts that the Specification
“merely identifies exemplary types of swelling agents” without defining or
limiting the term. Id. at 4. In support of this assertion, Petitioner notes that
the Specification uses the term “include” in its description of suitable
swelling agents, i.e., “[s]uitable swelling agents include, are those which, in
the presence of the multistage emulsion polymer and monomer, are capable
of permeating the shell and swelling the core.” Ex. 1001, 8:40–44 (emphasis
added); Pet. Reply 4. According to Petitioner, by using the term “include,”
the Specification “makes clear that swelling agents that are not capable of
permeating the shell and swelling the core also fall within the scope of the
invention.” Pet. Reply at 5. Petitioner asserts that Patent Owner’s proposed
claim construction disregards the Specification’s use of the term “include” in
an attempt “to completely change the meaning of the ‘435 patent’s
disclosure” and to impart impermissibly a “swelling step” into claim 1. Id.
at 4–5.
We disagree with Petitioner that the Specification’s use of the term
“include,” when describing suitable swelling agents, “makes clear” that
bases that are not capable of permeating the shell and swelling the core also
fall within the scope of the invention. Rather, the Specification’s use of the
word “include,” in this instance, is modified by the phrase immediately
following it, i.e., “are those which,” suggesting that suitable swelling agents
include only those which exhibit the functional characteristic thereafter
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described. See Ex. 1001, 8:40. In contrast, the following paragraph of the
Specification describes the structural requirement for suitable swelling
agents using the word “include,” without modifying it with a restrictive
phrase. Instead, when disclosing the volatile, fixed and permanent bases, the
word “include” is coupled with the phrases “such as” and “and the like,”
signaling open-ended or inclusive categories of these bases. See id. at 8:45–
52.
Further, we agree with Patent Owner that the Specification describes a
swelling agent not merely as being capable of permeating a shell and
swelling the core of a multistage emulsion polymer in the abstract, but
specifically under the conditions of the specific process for which the agent
is to be used. Indeed, the Specification explains that in its process for
preparing emulsion polymers, the core polymer of the multistage emulsion
polymer swells when it “is subjected to a basic swelling agent that permeates
the shell to at least partially neutralize the hydrophilic-functionality of the
core.” Ex. 1001, 9:10–15.
Based on the foregoing discussion, in light of the ’435 patent
Specification, we construe the claim term “swelling agent” as expressing a
structural element, i.e., “an aqueous or gaseous, volatile or fixed base, or
combinations thereof,” in functional terms, i.e., “capable of permeating the
shell and swelling the core, in the presence of the multistage polymer and
monomer, under the conditions of the specific process for which the agent is
to be used.” See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
1583 (Fed. Cir. 1996) (structural elements, e.g., “filter” and “brake,” may be
expressed in functional terms).

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2. “under conditions wherein there is no
substantial polymerization of the monomer”
Claim 1 requires the inclusion of a swelling agent in the aqueous
emulsion “under conditions wherein there is no substantial polymerization of
the monomer.” Although the Specification does not disclose a quantitative
amount of polymerization that meets (or exceeds) the recited “no substantial
polymerization” limitation, the Specification does disclose that “[t]here are
many means for providing that no substantial polymerization of monomer is
occurring.” Ex. 1001, 7:61–62. Those means include:
[T]he addition of one or more polymerization inhibitors, the
addition of one or more reducing agents, waiting for a sufficient
period of time until there are no longer an appreciable number
of free-radicals by virtue of them terminating, cooling the
contents of the reactor to limit the reactivity of the free-radicals,
and combinations thereof.
Id. at 7:62–8:1.
In our Institution Decision, we interpreted the claim phrase “under
conditions wherein there is no substantial polymerization of the monomer”
as including, but not being limited to, conditions wherein one or more of
these means specifically disclosed in the ’435 patent exist. Inst. Dec. 8.
Patent Owner “agrees with the construction adopted by the Board.”
PO Resp. 18. However, Patent Owner asserts that “whatever means are used
to achieve the required condition of ‘no substantial polymerization,’ a
[person of ordinary skill in the art] would understand that those means must,
in fact, create the stated condition.” Id. at 19. In other words, Patent Owner
asserts that “under conditions wherein there is no substantial polymerization
of the monomer” requires more than just the existence of one or more of the
means for establishing this condition disclosed in the Specification. Id.
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Instead, according to Patent Owner, the claim phrase requires that the end
result of implementing such means “must be to create a condition of ‘no
substantial polymerization of the monomer.’” Id.
Petitioner asserts that Patent Owner’s proposed interpretation
“produces an unworkable result,” as the Specification does not provide a
quantitative way for determining whether the condition actually exists. Pet.
Reply 6. However, as counsel for Patent Owner explained at the Oral
Hearing, the Specification discusses no substantial polymerization existing
when there is a depletion of free-radicals. See Tr. 41:11–22. Indeed, the
Specification states, “[w]hen there is no appreciable free-radical content, in
other words, when the radical flux is very low or approaches zero, then no
substantial amount of polymerization will occur.” Ex. 1001, 7:39–42.
Accordingly, based on the foregoing discussion, in light of the ’435
patent Specification, we determine that the broadest reasonable
interpretation of the claim phrase “under conditions wherein there is no
substantial polymerization of the monomer” includes, but is not limited to,
conditions wherein one or more of the means specifically disclosed in the
’435 patent exist, and/or wherein no appreciable free-radical content remains
in the reactor including the multistage polymer and unreacted monomer.
B. Anticipation by Toda
Petitioner asserts that claims 1–5 are anticipated by Toda (Ex. 1003)
under 35 U.S.C. § 102(b). Pet. 5, 20–34.
Toda discloses:
A process for preparation of latex of a hollow polymer which
comprises adding a base, in the presence of a monomer, to latex
containing carboxy-modified copolymer particles to make the
pH of the latex 8 or more; adding a carboxyl group-containing
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monomer to make the pH of the latex 7 or less; and then
polymerizing these monomers.
Ex. 1003, Abstract.
Toda discloses, in Example 9, a process for preparing hollow polymer
particles comprising the steps of forming a center layer, an intermediate
layer, and a surface layer. Id. at 11:59–68. The center layer is formed by
placing in a reactor 400 parts of deionized water, 0.3 part of monomer
mixture (a), i.e., 60% of methyl methacrylate (“MMA”), 5% of butyl
acrylate (“BA”) and 35% of methacrylic acid (“MAA”)), and 0.3 part of an
emulsifier; heating the mixture to 80° C and stirring to prepare an emulsion;
adding 7 parts of aqueous 3% potassium sulfate (“KPS”) solution; subjecting
the mixture to polymerization at 80° C for 0.5 hour to obtain seed particles;
adding 0.5 part of an emulsifier; continuously adding the residual monomer
mixture (a) over a period of one hour; and carrying out polymerization for 2
hours, resulting in a conversion of monomer mixture (a) of 98%. Id. at
11:59–62, 12:13–26. An intermediate layer is formed by adding to the
reactor 7 parts of KPS; continuously adding monomer mixture (b), i.e., 85%
of MMA, 10% of BA and 5% of MAA; and carrying out polymerization for
4 hours, resulting in a conversion of mixture (b) of 98%. Id. at 11:63–66,
12:26–31. The surface layer is formed by adding 7 parts of KPS to the
reactor; continuously adding monomer mixture (c), i.e., 95% of styrene and
5% of MMA; and carrying out polymerization for 4 hours, lowering the
temperature to 20° C to obtain latex-containing polymer particles, wherein
the conversion of monomer mixture (c) was 98%. Id. at 11:66–68, 12:31–
37.
In particular, Toda discloses in Example 9 obtaining hollow polymer
particles by (i) adding 3 parts of styrene to the obtained latex-containing
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polymer particles to soften the particles, and then adding 30 parts of aqueous
10% potassium hydroxide solution and heating to 80° C for 3 hours (base
treatment); (ii) adding 80 parts of aqueous 5% MAA and 50 parts of styrene
and stirring the mixture at 80° C for 3 hours (acid treatment); and (iii)
adding 10 parts of aqueous 3% KPS solution, stirring the mixture of
unreacted monomers at 80°C for 2 hours to carry out copolymerization,
resulting in a polymerization conversion at this final stage of 99%. Id. at
12:38–59.
Petitioner asserts that Toda discloses, in at least Example 9, each and
every element of claim 1 of the ’435 patent. Pet. 22–26. We agree with
Petitioner that Toda discloses in Example 9 that: (1) the core stage polymer
(center layer polymer) comprises 35% of MAA, a hydrophilic
monoethylenically unsaturated monomer, as well as 60% of MMA and 5%
of BA, both of which are nonionic monoethylenically unsaturated monomers
(id. at 22–23); (2) the shell stage polymer (surface layer) comprises 95% of
styrene and 5% of MMA, both of which are nonionic monoethylenically
unsaturated monomers (id. at 23, 29); and (3) a separate monomer comprised
3 parts of styrene, wherein the 3 parts was at least 0.5% by weight based on
the weight of the multi-stage emulsion polymer (id. at 24).
However, based on our construction of the term “swelling agent,” and
in consideration of the arguments and evidence, we disagree with
Petitioner’s assertion that the process disclosed in Toda Example 9 includes
adding a “swelling agent.” According to Petitioner, Toda’s addition of 30
parts of aqueous 10% potassium hydroxide solution to the reaction mixture
meets this claim limitation. Pet. 24, 31. In the Petition, Petitioner supports
this position by referring to Toda’s disclosure of adding potassium
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hydroxide solution in the process of Example 9 (Pet. 24 (citing Ex. 1003 at
12:40–43)), and to the testimony of Petitioner’s declarant, Dr. Marek W.
Urban, who explains that potassium hydroxide “is a fixed base expressly
identified by the ’435 patent as a possible swelling agent” (id. (citing Ex.
1002 ¶ 68)).
In the Response, Patent Owner asserts that Petitioner’s argument is
based entirely on inherency, rather than any express disclosure by Toda that
the potassium hydroxide used in Example 9 is a “swelling agent,” or is
“capable of permeating the shell and swelling the core.” PO Resp. 36–37.
Further, Patent Owner asserts that Petitioner has not established that such
inherency exists by providing, for example, data or experimental evidence
that the potassium hydroxide used in Toda’s Example 9 is capable of
permeating the shell and swelling the core of the multi-stage emulsion
polymer “each and every time.” Id. at 37–38.
In the Reply, Petitioner argues that Toda discloses a “swelling agent”
expressly, not inherently, by disclosing potassium hydroxide in Example 9.
Pet. Reply 7.
We disagree with Petitioner. We have construed the claim term
“swelling agent” as encompassing a structure, i.e., a base, and a function,
i.e., being capable of permeating the shell and swelling the core, in the
presence of the multistage polymer and monomer, under the conditions of
the specific process for which the agent is to be used. Petitioner has neither
asserted nor shown that Toda expressly teaches that potassium hydroxide
permeates the shell and swells the core of the multi-stage polymer in Toda’s
Example 9. Instead, Petitioner asserts that potassium hydroxide permeates
the shell and swells the core of the polymer particles in Toda because the
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same polymer particles are described in the ’435 patent as suitable for
swelling. Pet. Reply 14 (citing Ex. 1002 ¶¶ 62–66). In other words,
Petitioner’s argument is that Toda inherently discloses that potassium
hydroxide is capable of permeating the shell and swelling the core of the
polymer particles in Toda’s Example 9.
With respect to Petitioner’s inherency argument, what is missing is
some consideration of the reaction conditions in the process of Toda’s
Example 9. In Toda’s Example 9, the potassium hydroxide was added to the
mixture after the temperature of the mixture was lowered to 20° C and
styrene was added to soften the polymer particles. Ex. 1003, 12:35–42.
Patent Owner provides persuasive evidence, through the Declaration of Dr.
Schork, that a person of ordinary skill in the art would have understood that
the shell would be too hard at this temperature for potassium hydroxide to be
capable of permeating the shell and swelling the core. PO Resp. 39 (citing
Ex. 2011 ¶ 92). Petitioner has not argued persuasively otherwise. See, e.g.,
Pet. Reply 13–14.
Further, in Toda’s Example 9, after adding the potassium hydroxide,
the mixture is heated to 80 °C. Ex. 1003, 12:41–44. Patent Owner provides
persuasive evidence, also through the Declaration of Dr. Schork, that, based
on the teachings of Toda, a person of ordinary skill in the art would not
expect potassium hydroxide to permeate the shell and swell the core at that
temperature either. PO Resp. 39 (citing Ex. 2011 ¶¶ 86, 92); see also Ex.
2011 ¶ 93 (explaining why a person of ordinary skill would not consider
potassium hydroxide a “swelling agent” when the reaction temperature of
Toda Example 9 is increased to 80 °C). Here again, Petitioner has not
argued persuasively otherwise. See, e.g., Pet. Reply 13–14.
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Additionally, Patent Owner provides persuasive experimental
evidence that the potassium hydroxide solution used in Toda’s Example 9 is
not capable of permeating the shell and swelling the core. See PO Resp. 38.
Dr. Schork attempted to replicate Toda’s Example 9 twice and observed
each time that potassium hydroxide was not capable of permeating the shell
and swelling the core of the multi-stage emulsion polymer. Ex. 2011 ¶¶ 89–
94). According to Dr. Schork, results of those replications did not provide
any swelling during the base treatment of Example 9, suggesting that
potassium hydroxide did not perform as a swelling agent under the
conditions of Toda’s Example 9, as required by claims 1–5 of the ’435
patent. See id. ¶¶ 94, 102–103.
Petitioner challenges the probative value of Dr. Schork’s experimental
data by asserting that Dr. Schork “only tried to reproduce Example 9 of
Toda twice,” and that he did not “adequately replicate” the process. Pet.
Reply 12. More specifically, Petitioner asserts that Dr. Schork did not
accurately replicate Example 9 of Toda because: (1) his reaction produced
almost a thousand times more particles than a person of ordinary skill in the
art would expect; and (2) he used a different device to add the KPS to the
reaction mixture. In support of these assertions, Petitioner relies on the
Declaration of Petitioner’s declarant, Dr. Robert K. Prud’homme (Ex. 1021).
Pet. Reply 12 (citing Ex. 1021 ¶¶ 26, 41).
According to Dr. Prud’homme, “if a skilled artisan trying to replicate
Example 9 does not achieve the estimated number of particles or required
particle size, he would readily understand what factors to adjust to reproduce
Example 9.” Ex. 1021 ¶ 29. Dr. Prud’homme acknowledged that Dr.
Schork disagreed with this opinion. See id. (citing Ex. 1020, 135 (Schork
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Deposition)).
Further, in Dr. Prud’homme’s opinion, Dr. Schork’s use of a sub-
surfacing metering device to add the KPS to the reaction mixture, instead of
using a separating funnel as described in Toda’s Example 9, led to a more
uniform addition than in Toda, and resulted in a higher overall nucleation.
Id. ¶ 41. According to Dr. Prud’homme, “[a] less uniform addition, like the
one that would occur with a separatory funnel, would lead to ‘bursts’ of
radical initiation. Such bursts may lead to radical termination, which leads to
decreased numbers of particles.” Id. ¶ 40. Additionally, Petitioner asserts,
and Dr. Prud’homme explains, that Dr. Schork’s elimination of all of the
oxygen from the reaction increased the nucleation rate. Pet. Reply 13 (citing
Ex. 1020 ¶ 34).
Petitioner asserts also that “Dr. Schork may have used almost four
times the amount of emulsifier than what a skilled artisan would have used
given the number of particles he obtained when attempting to replicate
Example 9 of Toda.” Pet. Reply 13 (citing Ex. 1021 ¶¶ 38–39). However,
in his Declaration, Dr. Prud’homme states that Dr. Schork’s approach was
“not unreasonable.” Ex. 1021 ¶ 39. Dr. Prud’homme merely offered a
different approach which would have resulted in using less emulsifier,
stating, “it is also entirely reasonable to read Example 9 to mean 0.3 parts of
a 23% solution of SDBS.” Id.
Although we recognize Dr. Prud’homme’s expertise in the field of
emulsion polymerization, we do not accord his testimony, or Petitioner’s
arguments based on that testimony, persuasive weight. Dr. Prud’homme has
not provided experimental data demonstrating that a different manner of
performing the process of Example 9 would have provided results that differ
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from those observed in Dr. Schork’s replications. Nor has the Petitioner
provided any experimental data or evidence establishing that the process of
Toda’s Example 9 inherently disclosed a “swelling agent,” as required by
claims 1–5 of the ’435 patent. See MEHL/Biophile Int'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.”); see also Glaxo Inc. v. Novopharm
Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995) (inherency precluded where
patentee’s chemist twice produced different crystals from the same method).
Accordingly, after considering the arguments and evidence, and based
upon our construction of the term “swelling agent,” we find that Petitioner
has not shown that Toda discloses potassium hydroxide as a “swelling
agent” in the process of Example 9.
Based on the foregoing discussion and the record, we conclude that
Petitioner has not shown by a preponderance of the evidence that Toda
anticipates claims 1–5. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.”).
C. Obviousness over Touda
Petitioner contends that claims 1–5 would have been obvious over
Touda (Ex. 1004) under 35 U.S.C. § 103(a). Pet. 5, 34–47. Touda
discloses:
A process for producing polymer particles containing one
microvoid or two or more discrete microvoids, which comprises
(1) adding a base to a latex of a carboxyl-modified copolymer
containing 0.1 to 1000 parts of an organic solvent per 100 parts
by weight of the carboxyl-modified copolymer to neutralize at
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least part of the carboxyl groups in the copolymer, and
(2) adding an acid to the latex to adjust the pH of the latex to
not more than 7.
Ex. 1004, Abstract. Touda explains that:

[T]he present inventors have found that if the polymer particles
are swollen with a base in the presence of an organic solvent,
microvoid-containing polymer particles can be obtained easily
with a short period of time, and microvoid-containing particles
of a polymer having a high glass transition temperature can be
obtained, and that this process can also give polymer particles
having a plurality of microvoids.
Id. at 2:41–48.
Further, Touda teaches that “[t]here is no particular limitation on the
method of obtaining polymers containing carboxyl groups,” and discloses
that the method may include copolymerizing carboxyl-containing
monomers, which “is advantageous to production.” Id. at 2:66–3:4. Touda
discloses that exemplary carboxyl-containing monomers that can be used in
the invention include ethylenically unsaturated carboxylic acids, such as
methacrylic acid, and that exemplary monomers, which are copolymerizable
with carboxyl-containing monomers, include aromatic vinyl monomers, such
as styrene. Id. at 3:5–8, 25–29.
Additionally, Touda teaches that “[t]here is no particular restriction on
the method of including an organic solvent in the carboxyl-modified
copolymer latex,” and the method may, for example, involve adding an
organic solvent to a latex obtained by polymerization. Id. at 3:61–64. The
organic solvent used in the invention also is not particularly limited, as long
as it “can fully swell the copolymer particles.” Id. at 3:66–4:1. Touda
discloses specific examples of solvents, including toluene. Id. at 4:1–3.
“When an organic solvent is added to the latex after preparation of the latex
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of the carboxyl-modified copolymer, at least one of polymerizable organic
solvent may be used . . . such as styrene . . . .” Id. at 4:16–21.
Petitioner asserts that Touda discloses each and every element of
claim 1 of the ’435 patent. Pet. 35. According to Petitioner, “Touda
expressly discloses all but one of the elements of claim 1 of the ’435 patent
in a single example – Example 1 (combination of Examples 1S, 1A and
1B).” Id. at 36 (citing Ex. 1002 ¶ 80). Petitioner asserts that the one
element not disclosed in Touda Example 1 is taught expressly elsewhere in
the disclosure of Touda. Id.
Touda discloses in Example 1S the “[s]ynthesis of a seed latex,”
comprising: placing 300 parts of deionized water in a reactor, along with 95
parts of styrene (i.e., 95% of a nonionic monoethylenically unsaturated
monomer), and 5 parts of MAA (i.e., 5% of a hydrophilic monoethylenically
unsaturated monomer); heating and stirring the mixture; allowing the
temperature of the mixture to reach 70° C and then adding 17 parts of a 3%
aqueous solution of potassium persulfate; and maintaining the reaction
mixture at 70° C for three hours to complete the polymerization reaction,
resulting in a polymerization conversion of 99%. Ex. 1004, 6:33–49; Pet.
36.
Touda discloses in Example 1A the “[p]roduction of a filled polymer
latex,” comprising: charging the same reactor used in the production of the
seed latex with 518 parts of deionized water and 3.4 parts of seed latex;
allowing the temperature of the reactor to reach 80° C and then adding 30
parts of a 3% aqueous solution of potassium persulfate; adding a monomeric
mixture composed of 94 parts of styrene (i.e., at least 50% by weight of
nonionic monoethylenically unsaturated monomer), and 6 parts of acrylic
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acid over the course of 6 hours; maintaining the reaction mixture at 80° C
for two hours to complete polymerization, resulting in a polymerization
conversion of 97%. Ex. 1004, 6:51–67.
In particular, Touda discloses in Example 1B the “[p]roduction of a
microvoid-containing latex,” comprising: charging the same reactor used in
the production of the seed latex with 870 parts of deionized water, 100 parts
of the filled polymer latex, 1 part of sodium dodecyl-benzenesulfate, 30
parts of toluene, and 33 parts of a 10% aqueous solution of sodium
hydroxide (“NaOH”); stirring the mixture at 80° C for three hours; adding
300 parts of a 1% aqueous solution of hydrochloric acid; stirring the mixture
at 80° C for 3 hours; cooling the reaction mixture to room temperature; and
removing the organic solvent under reduced pressure. Id. at 7:4–24; Pet. 37.
Petitioner asserts that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
the process of Touda’s Example 1 by substituting styrene, a polymerizable
organic solvent, in place of the organic solvent toluene. Petitioner reasons
that the artisan would have been motivated to make this modification
because Touda teaches that a polymerizable organic solvent, such as styrene,
may be used when the organic solvent is added to the latex after preparation
of the latex of the carboxyl-modified copolymer (id. at 4:16–21), as in the
process of Example 1B (see id. at 7:6–10).
Patent Owner argues, among other things, that Touda does not
disclose expressly all but one of the elements of claim 1 of the ’435 patent in
Example 1. PO Resp. 50. In particular, Patent Owner asserts that Touda
does not disclose expressly sodium hydroxide, or any other base, as a
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“swelling agent,” i.e., being capable of permeating the shell and swelling the
core of the emulsion polymer under the conditions of Example 1. Id.
In the Reply, Petitioner asserts that Touda discloses a “swelling
agent” expressly, not inherently, by disclosing sodium hydroxide in Example
1. Pet. Reply 7.
In view of our construction of the claim term “swelling agent,” we
disagree with Petitioner. As discussed previously, we have construed the
claim term “swelling agent” as encompassing a structure, i.e., a base, and a
function, i.e., being capable of permeating the shell and swelling the core, in
the presence of the multistage polymer and monomer, under the conditions
of the specific process for which the agent is to be used. Petitioner has
neither asserted nor shown that Touda expressly teaches that sodium
hydroxide permeates the shell and swells the core of the multi-stage polymer
in Touda’s Example 1. Nor has Petitioner asserted or shown that Touda
suggests that sodium hydroxide is capable of functioning in this manner.
Instead, Petitioner asserts that sodium hydroxide permeates the shell and
swells the core of the polymer particles in Touda because the same polymer
particles are described in the ’435 patent as suitable for swelling. Pet. Reply
14 (citing Ex. 1002 ¶¶ 85–88). In other words, Petitioner’s argument is that
Touda inherently discloses that sodium hydroxide is capable of permeating
the shell and swelling the core of the polymer particles in Touda’s Example
1.
With respect to Petitioner’s argument, Patent Owner asserts that a
person of ordinary skill in the art would understand that the sodium
hydroxide used in Example 1 is not capable of permeating the shell and
swelling the core of the emulsion polymer under the conditions described in
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Example 1. PO Resp. 50. In support of this assertion, Patent Owner relies
on the Declaration of Patent Owner’s declarant, Dr. Schork. Id. (citing Ex.
2011 ¶¶ 127–128). Dr. Schork explains that in Touda’s Example 1, the core
is only 5 parts (5%) methacrylic acid and the shell is only 6 parts (6%)
acrylic acid, such that the core and the shell are only slightly acidic. Ex.
2011 ¶ 128. Dr. Schork states that a person of skill in the art “would
understand that under these conditions, NaOH would at best neutralize the
shell, not the core.” Id. According to Dr. Schork, “[g]iven the low levels of
acid, the NaOH would be unlikely to permeate and neutralize any part of the
particle. Certainly, NaOH would not permeate the shell and swell the core.
Instead, to the extent that any swelling occurred, it would take place in the
shell.” Id.
Additionally, Patent Owner provides persuasive experimental
evidence that the sodium hydroxide solution used in Touda’s Example 9 was
not capable of permeating the shell and swelling the core. See PO Resp. 51.
Dr. Schork replicated the process of Touda’s Example 1. Id. (citing Ex.
2011 ¶¶ 139–151). According to Dr. Schork, his experiment resulted in “no
observable swelling occurred during the reported ‘swelling stage’” (Ex.
2011 ¶ 151), or any polymer particles with voids, which “demonstrates that
the NaOH used in Example 1 is not capable of permeating the shell and
swelling the core of the emulsion under the conditions described therein”
(id. ¶ 130).
Petitioner challenges the probative value of Dr. Schork’s experimental
data by asserting that he “only tried to reproduce Example 1 of [Touda]
twice,” and that he did not “adequately replicate” the process. Pet. Reply 12.
However, Petitioner has not explained how Dr. Schork’s experiment did not
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adequately replicate Touda’s Example 1. See Pet. Reply 12. Nor has
Petitioner provided any experimental data demonstrating that a different
manner of performing the process would have provided results that differ
from those observed from Dr. Schork’s experiment. Indeed, Petitioner has
not provided any experimental evidence contradicting Dr. Schork’s results
or supporting its position that Touda uses a “swelling agent,” as required by
claims 1–5 of the ’435 patent.
Accordingly, after considering the arguments and evidence, and based
upon our construction of the term “swelling agent,” we find that Petitioner
has not established that Touda teaches or suggests the invention of claims 1–
5 of the ’435 patent.
Based on the foregoing discussion and the record, we conclude that
Petitioner has not shown by a preponderance of the evidence that claims 1–5
would have been obvious over Touda under 35 U.S.C. § 103(a).

III. MOTION TO AMEND
Patent Owner’s Motion to Amend is contingent on claims 1–5 of the
’435 patent being held unpatentable. Mot. Amend 2. Because these claims
are not held to be unpatentable, there is no occasion to reach or decide the
motion to amend.

IV. CONCLUSION
Petitioner has not demonstrated by a preponderance of the evidence
that claims 1–5 instituted for inter partes review are unpatentable under
35 U.S.C. § 102(b) as anticipated by Toda, or under 35 U.S.C. § 103(a) as
obvious over Touda.
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ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for cancellation of claims 1–5 of
the ’435 patent is denied;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Timothy P. McAnulty
Erin M. Sommers
Eric J. Fues
FINNEGAN, HENDERSON, FARABOW
GARRETT & DUNNER, LLP
timothy.mcanulty@finnegan.com
erin.sommers@finnegan.com
eric.fues@finnegan.com

PATENT OWNER:

Evangeline Shih
Frank C. Calvosa
Raymond N. Nimrod
James E. Baker
QUINN EMANUEL URQUHART & SULLIVAN LLP
evangelineshih@quinnemanuel.com
frankcalvosa@quinnemanuel.com
raymondnimrod@quinnemanuel.com
jamesbaker@quinnemanuel.com