R. R. Street & Co., Inc.v.Chemische Fabrik Kreussler & Co GmbH

Patent Trial and Appeal Board

May 26, 2015

13123606 (P.T.A.B. May. 26, 2015)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: May 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

R.R. STREET & CO., INC.,
Petitioner,
v.
CHEMISCHE FABRIK KREUSSLER & CO., GMBH,
Patent Owner.
_______________

Case IPR2015-00289
Patent 8,801,807 B2
_______________

Before LINDA M. GAUDETTE, BRIAN P. MURPHY, and
ZHENYU YANG, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
R.R. Street & Co., Inc. (“Petitioner”) filed a Petition (Paper 6,
Amended Petition (“Pet.”)) to institute an inter partes review of claims 1–15
(the “challenged claims”) of U.S. Patent No. 8,801,807 B2 (Ex. 1001, “the
’807 patent”). 35 U.S.C. §§ 311–319. Chemische Fabrik Kreussler & Co.,
GMBH (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Upon consideration of the Petition and
Patent Owner’s Preliminary Response, we determine Petitioner has not
established a reasonable likelihood that it would prevail in showing the
unpatentability of at least one of the challenged claims. Accordingly, the
Petition is denied under 35 U.S.C. § 314(a) for the reasons that follow.
II. BACKGROUND
A. Related Matters
Neither Petitioner nor Patent Owner indicates it is aware of another
judicial or administrative matter that would affect, or be affected by, a
decision in this proceeding. Paper 3, 1; see generally Prelim. Resp.
B. The ’807 Patent (Ex. 1001) and Illustrative Claim
The ’807 patent relates to a method of chemically cleaning textile,
leather, or fur goods in which the article to be cleaned is brought into contact
with a cleaning agent comprising at least one solvent. Ex. 1001, 1:12–15.
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Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of dry cleaning comprising bringing an
article to be cleaned into contact with a cleaning agent
comprising a solvent of the general formula (I):
(I)

wherein R
1 and R
2 are selected independently of each other
from the group consisting of an unsubstituted or
substituted, straight-chain or branched C2- through
C8-n-alkyl or C2- through C8-iso-alkyl residue.
1
At the time of the invention described in the ’807 patent, the most
frequently used solvent for commercial textile cleaning was
perchloroethylene. Id. at 1:66–67. A drawback of perchloroethylene is that
it is considered harmful to human health, and, according to the ’807 patent,
by the year 2020, its use will be banned in some states. Id. at 2:10–11, 17–
19. The solvents used in the method of the ’807 patent are said to possess
ecologically and toxicologically more favorable properties than
perchloroethylene or other solvents commonly used in the chemical cleaning
of textile, leather or fur goods, yet provide substantially equivalent or better

1 During prosecution, claim 1 was amended to change the structure of
formula (I). See Ex. 1002, 255. The structure, as amended, was identical to
the structure shown in issued claim 1, with the exception of an R1 in place of
the R4 shown in issued claim 1. See id.; see also id. at 64 (last listing of
claims submitted by Patent Owner during prosecution). A review of the
USPTO records reveals that Patent Owner filed a Request for Certificate of
Correction on March 17, 2015.
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cleaning properties. Id. at 2:35–44. An exemplary formula (I) solvent is
butylal. Id., claim 4; id. at 6:6–15.
The ’807 patent states that, in addition to the formula (I) solvent, the
cleaning agent used in the inventive method may include a different solvent,
such as perchloroethylene. Ex. 1001, 8:29–32, 44–47. The cleaning agent
may further include: cleaning boosters/activators (e.g., surfactants,
corrosion inhibitors, and emulsifiers), id. at 6:62–7:3, and substances for
trapping hydrogen proton donors, free hydrogen protons and/or free
carbonyl compounds (e.g., sodium or potassium carbonate), id. at 7:61–65.
C. Evidence Relied Upon
Petitioner’s patentability challenges are based on the following
references:
Reference Patent/Printed Publication Exhibit
The ’773
Publication
French Patent Publication 2,268,773 1004
Lambiotte Lambiotte & Cie S.A., n-Butylal,
http://web.archive.org/web/200807011434
34/http://www.lambiotte.com/index2.html
1005
Lang US 7,632,793 1007
Schulte US 6,558,432 1008
Stewart US 2,787,596 1009

In addition to these references, Petitioner relies on the Declaration of
Gina M. Stewart, Ph.D. (Ex. 1003). Pet. 7.
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D. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the ’807 patent claims based
on the following grounds:
Grounds Reference(s) Basis Claims Challenged
12 The ’773 Publication § 102(b)3 1, 2, 4, 5, and 10–15
2 The ’773 Publication § 103(a) 1, 2, 4, 5, 8, and 10–15

3 Lambiotte § 102(a) 1, 2, 4, 5, 10, and 12–
14
4 Lambiotte and the
knowledge of one of
ordinary skill in the
art
§ 103(a) 1, 2, 4–6, and 8–14

2 The challenges based on the ’773 Publication (above-identified Grounds 1
and 2), as listed in the Petition’s “Statement of Precise Relief Requested”
(Pet. 5–6), did not include claim 12. However, in its analysis of these
grounds, Petitioner identified how claim 12 is anticipated by, and obvious in
view of, the ’773 Publication. See id. at 24, 27. Patent Owner has treated
the challenges based on the ’773 Publication as including claim 12. See
Prelim. Resp. 18, 26. We likewise view the omission of claim 12 from
above-listed Grounds 1 and 2 in the Petition’s “Statement of Precise Relief
Requested” as inadvertent clerical error.
3 We do not separately list or consider Petitioner’s identical challenge under
35 U.S.C. § 102(a). See Pet. 26. Petitioner has not identified a substantive
difference between the challenges under § 102(a) and § 102(b).
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Grounds Reference(s) Basis Claims Challenged
54 Lambiotte and Lang § 103(a) 1, 2, 4–6, and 8–14
6 Schulte § 102(b)5 1, 3, 5, 7, 9–11, 14, and
15
7 Schulte and the
knowledge of one of
ordinary skill in the
art
§ 103(a) 1, 3, 5–11, 14, and 15
8 Schulte and Stewart § 103(a) 1, 3, 5–11, 14, and 15

III. CLAIM CONSTRUCTION
Claims of an unexpired patent are interpreted using the broadest
reasonable construction in light of the specification of the patent. See
37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012). Petitioner and Patent Owner disagree over
whether the claim preamble (“A method of dry cleaning”) limits the scope of
the claims. Prelim. Resp. 4–9; Pet. 18. The parties also disagree over the

4 Petitioner’s challenge based on the combination of Lambiotte and Lang
(above-identified Ground 5), as listed in the Petition’s “Statement of Precise
Relief Requested” (Pet. 6), did not include claims 5 and 9. However, in its
claim chart, Petitioner identified where the elements recited in claims 5 and
9 are found in Lambiotte and Lang. See id. at 41, 49. Patent Owner has
treated the challenge based on Lambiotte and Lang as including claims 5 and
9. See Prelim. Resp. 49, 53. We likewise view the omission of claims 5 and
9 from above-listed Ground 5 in the Petition’s “Statement of Precise Relief
Requested” as an inadvertent clerical error.
5 We do not separately list Petitioner’s identical challenge under 35 U.S.C.
§ 102(a). See Pet. 47. Petitioner has not identified a substantive difference
between the challenges under § 102(a) and § 102(b).
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scope and meaning of the claim term “solvent.” Prelim. Resp. 10–13; see,
e.g., Pet. 7, 12, 20.
A. A Method of Dry Cleaning
Petitioner contends the claims “are not limited to dry cleaning because
that element is only in the preamble.” Pet. 18.
Patent Owner contends the preamble is limiting, Prelim. Resp. 4–9,
because “it is clear [from the Specification that the invention] is directed to a
new use (i.e., as a solvent in dry cleaning) for compounds described
therein,” id. at 6. In support of this contention, Patent Owner argues the
Specification does not describe any other uses for the recited “solvent of the
general formula (I),” and that the preamble provides context and definition
for the claim terms “cleaned” and “cleaning agent.” Id. at 6–7.
“[A] preamble is a claim limitation if it recites essential structure or
steps, or if it is necessary to give life, meaning, and vitality to the
claim.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309 (Fed.
Cir. 2004) (internal quotation marks omitted). “The effect preamble
language should be given can be resolved only on review of the entirety of
the patent to gain an understanding of what the inventors actually invented
and intended to encompass by the claim.” Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).
The title of the ’807 patent is “Use of Diether Compounds for
Chemically Cleaning Textile, Leather, or Fur Goods.” The ’807 patent
Specification describes the invention as concerning “a method of chemically
cleaning textile, leather or fur goods,” “the use of a solvent having certain
properties and features for the production of a cleaning agent for the
chemical cleaning of textiles, leather and fur goods,” and “a liquid cleaning
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agent for use in a method of chemically cleaning textile, leather or fur
goods.” Ex. 1001, 1:12–13, 16–21. The Specification distinguishes
“chemical cleaning” from wet cleaning by explaining that clothing made of
materials such as leather and fur are not suitable for traditional wet cleaning
because they swell in water and become matted. Id. at 1:25–29.
“[T]herefore the care of such goods has to be carried out in commercial
textile cleaning using suitable solvents.” Id. at 1:33–34. The Specification
states that modern chemical cleaning machines “operate with [] ‘dry to dry’
technology in which the material to be cleaned is loaded dry and is also
unloaded dry again after the procedure is concluded.” Id. at 4:58–60.
Patent Owner contends one of ordinary skill in the art would
understand that the cleaning of garments, furnishings, or similar consumer
goods using solvents with little or no water, as described in the ’807 patent,
is a “dry cleaning” process. See Prelim. Resp. 8. Patent Owner directs us to
the U.S. Environmental Protection Agency’s National Perchloroethylene Air
Emission Standards for Dry Cleaning Facilities (71 Fed. Reg. 42,567,
42,724–46 (July 27, 2006) (Ex. 2002)), Prelim. Resp. 8–9, which describe
“most” dry cleaning facilities as “us[ing] [perchloroethylene] in a dry
cleaning machine to clean all types of garments, including clothes, gloves,
leather garments, blankets, and absorbent materials.” Ex. 2002, 2 (col. 3).
Patent Owner also directs us to the Ireland Environmental Protection
Agency Guidelines (Aug. 2008) for a definition of “dry cleaning” which is
said to apply to the dry cleaning industry in Europe: “any industrial or
commercial activity using VOCs [volatile organic compounds] in an
installation to clean garments, furnishing and similar consumer goods with
the exception of the manual removal of stains and spots in the textile and
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clothing industry.” Prelim. Resp. 8 (quoting Ex. 2001, 8). Petitioner’s
expert, Dr. Stewart, provides a similar description of dry cleaning as a
process “used to clean textiles by bringing articles in contact with an organic
solvent or a formulation of an organic solvent that contains no water, or in
some instances, small amounts of water.” Ex. 1003 ¶ 9. Dr. Stewart
indicates dry cleaning is a process conducted in a machine. See id. ¶ 14
(explaining that regulations aimed at preventing the escape of dry cleaning
solvents into the atmosphere have led to the use of closed dry-cleaning
systems, i.e., dry-to dry machines).
Based on the evidence cited by Patent Owner and Dr. Stewart’s
testimony, we determine one of ordinary skill in the dry cleaning art6 would
understand the ’807 patent’s description of a method of chemically cleaning
textiles, leather, and fur goods using organic solvent with little to no water as
“a method of dry cleaning.” In other words, based on the present record, we
find the invention described in the ’807 patent is limited to a method of dry
cleaning using a solvent of general formula (I). Therefore, for purposes of
this decision, we determine the preamble, “A method of dry cleaning,” is a
claim limitation, and we interpret “dry cleaning” as “using one or more
solvents, with little or no water, to clean textiles, leather, or fur goods in a
dry cleaning machine.” See, e.g., Ex. 1001, 4:58–60; Ex. 1003 ¶¶ 9, 14.7

6 Petitioner contends that “[i]n the field relevant to the ’807 Patent, a person
of ordinary skill in the art would have held a bachelor’s degree in chemistry,
chemical engineering or a closely related discipline, and one to two years of
practical or industrial experience in dry cleaning.” Pet. 12 (citing Ex. 1003
¶ 16).
7 See also Ex. 1002, 399 (wherein original claim 1 of the national stage ’807
patent application recited “A use of a solvent of the general formula (I) . . .
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B. Solvent
Petitioner does not provide an explicit interpretation of the term
“solvent,” but contends “[t]he claim terms in the ’807 patent are presumed to
take on their ordinary and customary meaning based on the broadest
reasonable interpretation of the claim language.” Pet. 12.
Patent Owner contends “one of ordinary skill in the art of dry cleaning
understands the term ‘solvent’ to refer to the active cleaning ingredient in
the cleaning agent and/or cleaning method,” and that Petitioner’s
patentability challenges are based on an overly broad interpretation of the
term “solvent” as encompassing stabilizers for active cleaning ingredients.
Prelim. Resp. 10. Patent Owner argues, more specifically, that “the broadest
reasonable interpretation of ‘solvent’ that is consistent with the ’807 patent
Specification and the understanding of the term by one of ordinary skill in
the art is ‘a compound having the ability to dissolve raw materials or
contaminants.’” Id. at 13. Patent Owner contends one of ordinary skill in
the art would not interpret the term “solvent” as encompassing an ingredient
that acts as a stabilizer in a cleaning agent because a stabilizer is a substance
used to inhibit a chemical reaction. Id. at 11 (citing OXFORD CHEMICAL

as a cleaning agent in a method of machine chemical cleaning of textile,
leather or fur goods in a cleaning machine, wherein the cleaning machine is
a closed system” (emphasis added)); id. at 284 (wherein claim 1, previously
amended to replace “A use of” with “A method of using” (id. at 325), was
further amended to delete the italicized language and add the underlined
language: “A method of dry cleaning comprising bringing an article to be
cleaned into contact with a cleaning agent comprising a solvent of the
general formula (I)”).
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DICTIONARY (Ex. 2004) (defining “stabilizer” as “[a] substance used to
inhibit a chemical reaction, i.e. a negative catalyst”)).
In general, words used in a claim are accorded their ordinary and
customary meaning. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp.,
488 F.3d 982, 992 (Fed. Cir. 2007). “Properly viewed, the ‘ordinary
meaning’ of a claim term is its meaning to the ordinary artisan after reading
the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.
2005) (quoted in Netcraft Corp. v. ebay, Inc., 549 F.3d 1397 (Fed. Cir.
2008)); see also Advanced Fiber Techs. (AFT) Trust v. J&L Fiber Servs.,
Inc., 674 F.3d 1365, 1375 (Fed. Cir. 2012) (noting that the intrinsic
evidence, not extrinsic evidence, is the most reliable source for claim
interpretation).
As an initial matter, we note the parties do not contend, nor do we
find, that the ’807 patent provides an explicit definition of the term
“solvent.” The ’807 patent Specification describes “[p]erchloroethylene [as]
a solvent with excellent solvent power in relation to the most widely varying
forms of dirt,” further stating that “a large part of the superior wardrobe can
be cleaned in perchloroethylene in accordance with international textile care
markings.” Ex. 1001, 2:3–7. The Specification states that “the object of the
[] invention is to provide a solvent which, in regard to its cleaning
properties, in comparison with perchloroethylene or the other solvents
usually employed in the chemical cleaning of textile, leather or fur goods, is
substantially equivalent or even better.” Id. at 2:35–39.
The Specification refers to “the cleaning capacity of compounds of
the formula (I)[,] . . . perchloroethylene and the other solvents
conventionally used in the chemical cleaning of textile, leather and fur
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goods.” Id. at 3:55–59. The Specification states that “the solvent in
accordance with formula (I) has good solvent properties for oily and fatty
soilings such as for example oil, fats and greases, waxes, fatty acids.” Id. at
4:4–6. The Specification indicates that a solvent of general formula (I) can
completely replace other conventional solvents, such as perchloroethylene,
in the recited cleaning agent. See id. at 4:26–31. Other components
identified as suitable in the cleaning agent are those that “improv[e] the
cleaning effect,” id. at 6:46–47, and prevent decomposition of the solvent,
Id. at 8:7–10.
For purposes of this decision, based on our review of the term
“solvent” as used in the Specification and claims, we agree with Patent
Owner that the broadest reasonable interpretation of the claim term
“solvent” is an active cleaning ingredient in the cleaning agent used in the
recited method of dry cleaning. See Ormco Corp. v. Align Tech., Inc.,
498 F.3d 1307, 1313–14 (Fed. Cir. 2007) (limiting claims in part based on
specification’s identification of the “primary objective” of the invention and
its distinction of the invention from the prior art based on that objective).
IV. ANALYSIS
A. Ground 1: Anticipation of Claims 1, 2, 4, 5, and 10–15 under
35 U.S.C. § 102(b) by the ’773 Publication
Claim 1 recites: “A method of dry cleaning comprising bringing an
article to be cleaned into contact with a cleaning agent comprising a solvent
of the general formula (I).” (Emphasis added.) An exemplary formula (I)
solvent is butylal (CH3CH2CH2CH2OCH2OCH2CH2CH2CH3). Ex. 1001,
claim 14, 6:6–15; Pet. 20. Claim 1, formula (I) also encompasses ethylal
(CH3CH2OCH2OCH2CH3) and n-propylal
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(CH3CH2CH2OCH2OCH2CH2CH3). Pet. 19–20; see also Prelim Resp. 15,
17 (acknowledging ethylal, propylal, and butylal are “formaldehyde acetals”
within the scope of claim 1). In Section III.B., above, we determined that,
for purposes of this decision, the broadest reasonable interpretation of the
term “solvent,” as used in the claims, is an active cleaning ingredient in the
recited method of dry cleaning. See supra, 12.
1. The ’773 Publication (Ex. 1004)
The ’773 Publication describes a process for stabilizing chlorinated
solvents, such as methyl chloroform, trichlorethylene, and
perchloroethylene, which “are used . . . to degrease metals, to dry-clean
textiles and as ingredients in aerosols.” Ex. 1004, 1:19–26, 2:11–12
(emphasis added). The process involves adding to the chlorinated solvents
“between approximately 3 weight percent and approximately 5 weight
percent” of an acetal, “in particular ethylal, propylal and butylal.” Id. at
1:15–16, 33–35. According to the ’773 Publication, because the boiling
points of methyl chloroform, trichlorethylene, and perchloroethylene are
near that of the acetals, “stabilization is as effective at the boiling
temperature of the chlorinated solvent as at the ambient temperature. Thus,
during the distillation process, the liquid phase and vapor phase of the
chlorinated hydrocarbon keep their stability.” Id. at 2:13–18.
2. Analysis
Petitioner contends claim 1 is anticipated by the ’773 Publication’s
disclosure of using ethylal, propylal, and butylal to stabilize solvents used to
dry-clean textiles. Pet. 20–21.
Patent Owner concedes the ’773 Publication discloses that acetal-
stabilized, chlorinated solvents can be used to dry-clean textiles. Prelim.
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Resp. 15. However, Patent Owner argues the ’773 Publication’s addition of
minor amounts (< 5%) of formaldehyde acetals within the scope of claim 1,
formula (I), for the purpose of stabilizing the chlorinated solvents is not a
description of using the acetals themselves as solvents, i.e., the active
cleaning ingredient, in a dry cleaning method. Id. at 11.
Petitioner has not explained why, or identified evidence which
establishes that, acetals within the scope of claim 1, formula (I), added in
amounts of less than 5% to stabilize chlorinated dry cleaning solvents, i.e.,
the components described in the ’773 Publication as active cleaning
ingredients (see Ex. 1004, 2:9–12), would themselves function as active
cleaning ingredients as required by claim 1. See, e.g., Pet. 20 (quoting
Ex. 1004, 2:9–12 (stating that chlorinated solvents stabilized with acetals
“are likely to receive all the known applications for this type of solvent.
They are used especially to degrease metals, to dry-clean textiles and as
ingredients in aerosols.”)).
Accordingly, Petitioner has failed to meet its burden to establish a
reasonable likelihood it would prevail in showing at least one of claims 1, 2,
4, 5, and 10–15 is anticipated under 35 U.S.C. § 102(b) by the ’773
Publication. 8, 9

8 We note that claim 9, from which claims 10 and 11 depend, is not included
in above-listed Grounds 1 and 2. Petitioner’s analyses of these grounds do
not identify explicitly where the claim 9 limitations are taught or suggested.
Therefore, for this additional reason, Petitioner has not met its burden to
establish a reasonable likelihood it would prevail in showing claims 10 and
11 are anticipated by, or obvious in view of (see Section IV.B. infra), the
’773 Publication. See Prelim. Resp. 19, 29–30; Pet. 19–29.
9 In its analysis of claim 5, Petitioner states that “one of skill in the art would
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B. Ground 2: Obviousness of Claims 1, 2, 4, 5, 8, and 10–15 under
35 U.S.C. § 103(a) over the ’773 Publication
Petitioner contends the ’773 Publication “teaches the use of ethylal,
propylal, and butylal in a dry cleaning system[, and] . . . one of ordinary skill
in the art at the time of the invention would readily understand the use of
such compounds as cleaning agents.” Pet. 27 (citing Ex. 1003 ¶¶ 35–37).
Patent Owner argues Petitioner has not explained how the ’773
Publication disclosure differs from the invention recited in claim 1 and why
a claim 1 feature not described in the ’773 Publication would have been
obvious. Prelim. Resp. 23. Patent Owner also argues there is no evidence
supporting Dr. Stewart’s testimony that one of ordinary skill in the art would
have understood that ethylal, propylal, and butylal were useful as cleaning
agents. Id.
Like Patent Owner, we are unable to discern a substantive difference
between the anticipation challenge (above-listed Ground 1) and the
obviousness challenge as to claim 1. As explained in Section IV.A.2.,
above, Petitioner has not shown that the formaldehyde acetals added in
amounts of less than 5% in the ’773 Publication for the purpose of
stabilizing chlorinated dry cleaning solvents would themselves function as
active cleaning ingredients. Moreover, even assuming one of ordinary skill

not understand, with reasonable certainty, the scope of Claim 5, rendering it
invalid under 35 U.S.C. § 112.” Pet. 22. We did not consider this argument
because it exceeds the scope of inter partes review. See 35 U.S.C.
§ 311(b)(2013) (“A petitioner in an inter partes review may request to cancel
as unpatentable 1 or more claims of a patent only on a ground that could be
raised under section 102 or 103 and only on the basis of prior art consisting
of patents or printed publications.”).
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in the art would have understood that ethylal, propylal, and butylal were
useful as cleaning agents (see Ex. 1003 ¶ 36), Petitioner has not explained
how that knowledge would have led one of ordinary skill in the art to modify
the ’773 Publication to achieve a method of dry cleaning wherein a solvent
of general formula (I), e.g., butylal, functioned as an active cleaning
ingredient.
For the above reasons, Petitioner has failed to meet its burden to
establish a reasonable likelihood it would prevail in showing at least one of
claims 1, 2, 4, 5, 8, and 10–15 would have been obvious under 35 U.S.C.
§103(a) over the ’773 Publication.
C. Ground 3: Anticipation of Claims 1, 2, 4, 5, 10, and 12–14
under 35 U.S.C. § 102(a) by Lambiotte
Claim 1 recites: “A method of dry cleaning comprising bringing an
article to be cleaned into contact with a cleaning agent.” In Section III.A.,
above, we determined that for purposes of this decision, the preamble, “A
method of dry cleaning,” limits the scope of the claims. We also interpreted
“dry cleaning” as “using solvents with little or no water to clean garments,
furnishings, or similar consumer goods in a dry cleaning machine.”
1. Lambiotte (Ex. 1005)
Lambiotte is an internet publication describing the properties of n-
butylal. Ex. 1005, 2. The publication further describes acetals, such as n-
propylal, ethylal, and n-butylal as having physical and chemical
characteristics which “give extraordinary benefits for cleaning,” including
high solvent power, water miscibility, good degreasing properties, and
compatibility with organic solvents and surfactants. Id. at 4.
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2. Analysis
Petitioner contends claim 1 is anticipated by Lambiotte’s description
of acetal solvents, including ethylal, propylal, and butylal, for various
cleaning applications. Pet. 29.
Patent Owner argues Lambiotte fails to describe a method of dry
cleaning and, at most, indicates n-butylal might be used for cleaning tires,
walls, or ovens. Prelim. Resp. 33–34.
We agree with Patent Owner that Petitioner has not explained
adequately why Lambiotte’s general description of acetals, such as butylal,
as having various advantageous cleaning properties is sufficient to show
anticipation of the more specific dry cleaning method recited in claim 1.
Petitioner has not explained why one of ordinary skill in the art would have
understood the enumerated cleaning properties listed in Lambiotte as
describing a defined and limited class of cleaning applications such that one
of ordinary skill in the art would have recognized a description of using
butylal, or other acetals within the scope of general formula (I), “with little
or no water to clean garments, furnishings, or similar consumer goods in a
dry cleaning machine” as required by challenged claim 1.
Accordingly, Petitioner has failed to meet its burden to establish a
reasonable likelihood it would prevail in showing at least one of claims 1, 2,
4, 5, 10, and 12–14 is anticipated under 35 U.S.C. § 102(a) by
Lambiotte.10, 11

10 For the same reasons discussed in note 8, we agree with Patent Owner, see
Prelim. Resp. 36–37, that Petitioner has not met its burden to establish a
reasonable likelihood it would prevail in showing claim 10 is anticipated by
Lambiotte, because Petitioner’s analysis of above-listed Ground 3 does not
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D. Ground 4: Obviousness of Claims 1, 2, 4–6, and 8–14 under
35 U.S.C. § 103(a) over Lambiotte and the Knowledge of One of
Ordinary Skill in the Art
Petitioner contends Lambiotte “teaches the use of ethylal, propylal,
and butylal in a dry cleaning system[, and] . . . one of ordinary skill in the art
at the time of the invention would readily understand the use of such
compounds as cleaning agents.” Pet. 34 (citing Ex. 1003 ¶¶ 47–48).
Patent Owner argues Petitioner has not explained how Lambiotte
differs from the invention recited in claim 1 and why a claim 1 feature not
described in Lambiotte would have been obvious. Prelim. Resp. 40.
We agree with Patent Owner that Petitioner has failed to cite to
persuasive evidence in support of its contention that one of ordinary skill in
the art would have understood the use of butylal, or another compound
within the scope of claim 1 formula (I), in a dry cleaning formulation.
Petitioner’s statement is based on the unsupported and conclusory
declaration testimony of Dr. Stewart. See. Ex. 1003 ¶ 47 (“With respect to
Claims 1, 2 and 4, as previously explained, the reference teaches the use of
ethylal, propylal, and butylal in a dry cleaning formulation. Moreover, one
of ordinary skill in the art at the time of the invention would readily
understand the use of such compounds as cleaning agents.”). We note that

identify explicitly where the claim 9 limitations are described in Lambiotte.
See Pet. 29–33.
11 Similar to its analysis of claim 5 in above-listed Ground 1, Petitioner
states that “one of skill in the art would not understand, with reasonable
certainty, the scope of Claim 5, rendering it invalid under 35 U.S.C. § 112.”
Pet. 32. As discussed in note 9, we did not consider this argument because it
exceeds the scope of inter partes review.
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in a prior discussion of the state of the art as of the effective filing date of the
’807 patent, Dr. Stewart testified that in 2008 “Lambiotte & Cie presented
ethylal and butylal as good alternatives to chlorinated solvents.” Id. ¶ 13.
However, the “journal Tenside,” cited in support of this statement, see id., is
not of record in the present proceeding. See 37 C.F.R. § 42.104(b)(5)
(“[T]he petition must set forth . . . [t]he exhibit number of the supporting
evidence relied upon to support the challenge and the relevance of the
evidence to the challenge raised, including identifying specific portions of
the evidence that support the challenge. The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance or to
identify specific portions of the evidence that support the challenge.”)
In sum, Petitioner has not identified sufficient evidence to establish a
reasonable likelihood it would prevail in showing at least one of claims 1, 2,
4–6, and 8–14 would have been obvious under 35 U.S.C. §103(a) over
Lambiotte and the knowledge of one of ordinary skill in the art.
E. Ground 5: Obviousness of Claims 1, 2, 4–6, and 8–14 under
35 U.S.C. § 103(a) over Lambiotte and Lang
1. Lang (Ex. 1007)
Lang describes solvents for use in washing and cleaning
compositions. Ex. 1007, 8:25–58. The solvents are acetals having a formula
which differs from formula (I) of claim 1. See Pet. 38.
2. Analysis
Petitioner contends Lang12 describes the use of tetraalkoxyacetals,
including tetramethoxyethane, as solvents in washing and cleaning

12 In discussing this challenge, Petitioner refers to Lang as “the WO 097214
reference,” i.e., the PCT publication number. Pet. 38. We assume this
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compositions. Pet. 38. Petitioner argues “[a] person of ordinary skill in the
art, upon seeing the uses of the tetraalkoxyacetals and especially
tetramethoxyethane in [Lang], would [have] recognize[d] that the simpler
acetyls offered by Lambiotte (i.e., ethylal, n-propylal, and n-butylal) would
[] likely be appropriate substitutes.” Id.13
Patent Owner argues the proposed substitution of Lambiotte’s
formaldehyde acetals for the tetraalkoxyacetals in Lang’s method would not
result in the claim 1 method because Lang fails to teach the use of
tetraalkoxyacetals in a method of dry cleaning. Prelim. Resp. 52. Patent
Owner also argues Petitioner has failed to provide evidence to support its
contention that “one of ordinary skill in the art would have expected the
chemical and physical properties of acetals with a different backbone than

reference was in error, and that Petitioner intended to refer to the issued US
patent, as the PCT publication WO2006/097214 is not of record, and all
citations are to US 7,632,793 B2 (Ex. 1007). See Prelim. Resp. 49 n.1.
13 Petitioner’s discussion of this ground, as well as above-listed Ground 8, is
preceded by the following statement: “A conclusion of obviousness based
on more than a single piece of prior art does not require a motivation to
combine references.” Pet. 37, 49. Likewise, Dr. Stewart’s analysis of
above-listed Grounds 5 and 8 is preceded by the statement: “I am informed
that a conclusion of obviousness based on more than a single piece of prior
art does not require a motivation to combine references.” Ex. 1003 ¶¶ 55,
66. Petitioner does not provide any citations in support of this statement,
which we find to be contrary to the relevant case law. See, e.g., InTouch
Techs., Inc. v. VGO Commns, Inc., 751 F.3d 1372, 1348 (Fed. Cir. 2014)
(noting the declarant’s testimony “was plagued with numerous problems,
including her failure to: (1) identify sufficient reasons or motivations to
combine the asserted prior references.”).
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the acetals claimed in claim 1 of the ’807 patent to have the same chemical
and physical properties.” Id. at 51–52.
As discussed in Section III.A., above, the claims are limited to “[a]
method of dry cleaning” (claim 1), which we interpret as “a method of using
solvents with little or no water to clean clean textiles, leather, or fur goods in
a dry cleaning machine.” Petitioner cites column 8, lines 17–19, and column
9, lines 20–23 and 31–32, of Lang for a teaching of using tetraalkoxyacetals
in laundry detergents and as stain sprays and stain removers for textiles.
Pet. 38–39. We agree that Lang lists numerous uses of the disclosed
tetraalkoxyacetals in cleaning-related products. See Prelim. Resp. 52;
Ex. 1007, 9:20–31. However, the list does not include using the
tetraalkoxyacetals with little or no water to clean garments, furnishings, or
similar consumer goods in a dry cleaning machine, and Petitioner has not
explained why one of ordinary skill in the art reasonably would have
expected, based on this list, that Lang’s tetraalkoxyacetals could be used in
this manner, i.e., in a method of dry cleaning.
We also agree with Patent Owner that Petitioner has not explained
adequately why one of ordinary skill in the art reasonably would have
expected that Lambiotte’s acetals could be substituted successfully for the
tetraalkoxyacetals in the cleaning applications described in Lang. See
Prelim. Resp. 50–52. Petitioner does not provide a citation to the record in
support of its statement that “[a] person of ordinary skill in the art, upon
seeing the uses of [Lang’s] tetraalkoxyacetals . . . would recognize that the
simpler acetyls offered by Lambiotte . . . would [] likely be appropriate
substitutes,” Pet. 38. This appears to be a quote from Dr. Stewart’s
declaration. See Ex. 1003 ¶ 55. However, Dr. Stewart has not identified
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evidence in support of this statement, or otherwise explained the basis for
her opinion. See id.
For the above reasons, Petitioner has not established a reasonable
likelihood it would prevail in showing at least one of claims 1, 2, 4–6, and
8–14 would have been obvious under 35 U.S.C. § 103(a) over Lambiotte and
Lang.
F. Ground 6: Anticipation of Claims 1, 3, 5, 7, 9–11, 14, and 15
under 35 U.S.C. §102 (b) by Schulte
Claim 1 requires:
a cleaning agent comprising a solvent of the general
formula (I):
(I)

wherein R
1 and R
2 are selected independently of each other
from the group consisting of an unsubstituted or
substituted, straight-chain or branched C2- through
C8-n-alkyl or C2- through C8-iso-alkyl residue.
“Butylal . . . is the compound of general formula (I) where R4
and R2 (or R1 and R2) each is an unsubstituted C4-alkyl residue, and
could be branched (as in iso-butylal, sec-butylal or tert-butylal) or
unbranched (as in n-butylal).” Pet. 20.
1. Schulte (Ex. 1008)
Schulte describes “substrate cleaning systems, such as textile cleaning
systems, utilizing an organic cleaning solvent and a pressurized fluid
solvent.” Ex. 1008, 1:12–14. According to Schulte, “there are significant
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regulatory burdens placed on solvents such as perchloroethylene,” id. at
1:36–37, “a solvent [used] to clean delicate substrates, such as textiles, in a
process referred to as ‘dry cleaning,’” id. at 1:19–32. Schulte’s cleaning
system “utilizes solvents that are less regulated and less combustible, and
that efficiently remove different soil types typically deposited on textiles
through normal use.” Id. at 5:16–19. Schulte identifies suitable solvents as
having general chemical structures A–O. Id. at 7:1–12:67. General
chemical structure F is CnHjXkOb where each X is independently F, Cl, Br,
or I; 2 ≤ n ≤ 32; O ≤ j, k ≤ (2n+2); 6 ≤ j + k) ≤ (2n + 2); and l ≤ b ≤ 6. Id. at
9:13–34. Di-n-butyl ether, 1-methoxy nonafluorobutane is the only specific
compound identified by Schulte as an example of an organic solvent
described by general chemical structure F. Id. at 9:35–37.
2. Analysis
Petitioner notes Schulte explicitly identifies a di-n-butyl ether (i.e., di-
n-butyl ether, 1-methoxy nonafluorobutane) as an example of a suitable
organic solvent having general chemical structure F. Pet. 44. Petitioner
contends Schulte’s general chemical structure F describes (monoether) di-n-
butyl ether (CH3CH2CH2CH2OCH2CH2CH2CH3) when n=8, j=18, k=0, and
b=1. Id. at 43. Petitioner contends Schulte also describes the diether version
of monoether di-n-butyl ether, i.e., butylal
(CH3CH2CH2CH2OCH2OCH2CH2CH2H3), as a dry-cleaning solvent when
n=9, j=20, k=0, and b=2 in general chemical structure F. Id. (emphasis
added to show the difference in the two structures). Petitioner argues this
description of butylal as a suitable cleaning solvent in a dry-cleaning system
anticipates claim 1. Id. at 43–44.
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Patent Owner argues Petitioner has not explained sufficiently “how
the general chemical structure F is sufficiently limited or well delineated to
anticipate” general formula (I) of claim 1, noting di-n-butyl ether is not
described by general formula (I). Prelim. Resp. 56–57. We agree with
Patent Owner.
General chemical structure F is one of 15 general chemical structures
identified as suitable for use in Schulte’s cleaning system. Each of these
general chemical structures encompasses numerous compounds. Knowing
the desired end result is a compound of claim 1, general formula (I),
Petitioner uses impermissible hindsight to derive such compound, i.e.,
butylal, from Schulte’s disclosure of di-n-butyl ether,1-methoxy
nonafluorobutane. Pet. 43–44; Ex. 1003 ¶ 57. However, Petitioner has not
explained adequately why one of ordinary skill in the art would have
recognized butylal from Schulte’s disclosure of di-n-butyl ether, 1-methoxy
nonafluorobutane as an exemplary compound of general chemical
structure F.
Accordingly, Petitioner has failed to meet its burden to establish a
reasonable likelihood it would prevail in showing at least one of claims 1, 3,
5, 7, 9–11, 14, and 15 is anticipated under 35 U.S.C. § 102(b) by Schulte.14

14 Petitioner’s challenges based on Schulte (above-identified Grounds 6–8),
as listed in the Petition’s “Statement of Precise Relief Requested” (Pet. 6–7)
include claim 7. However, claim 7 is not mentioned in Petitioner’s analyses
of these challenges. See id. at 43–55. Therefore, for this additional reason,
Petitioner has not met its burden to establish a reasonable likelihood it would
prevail in showing claim 7 is anticipated by Schulte, or in showing claim 7
would have been obvious over Schulte in view of the knowledge of one of
ordinary skill in the art or in view of Stewart. See 37 C.F.R. § 42.104(b)(4)
(stating that a petition for inter partes review “must specify where each
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G. Ground 7: Obviousness of Claims 1, 3, 5–11, 14, and 15 under
35 U.S.C. § 103(a) over Schulte and the Knowledge of One of
Ordinary Skill in the Art
Petitioner contends the invention as recited in claim 1 would have
been obvious because Schulte “teaches the use of ethylal, propylal, and
butylal in a dry cleaning system[, and] . . . one of ordinary skill in the art at
the time of the invention would [have understood] the use of such
compounds as cleaning solvents or agents.” Pet. 47 (citing Ex. 1003 ¶¶ 62–
63).
Patent Owner contends “Petitioner has failed to provide any reason for
why it would have been obvious to select butylal or any other compound
encompassed by general formula (I) of claim 1 of the ’807 patent from the
general chemical structure F in [Schulte].” Prelim. Resp. 58.
As noted by Patent Owner, Petitioner’s challenge as to claim 1 is
based solely on the unsupported testimony of Dr. Stewart. Id. Dr. Stewart’s
testimony is deficient in that she fails to provide some explanation as to how
the prior art would have provided direction to one of ordinary skill in the art
to select ethylal, propylal, or butylal from the numerous possible choices in
Schulte. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed. Cir. 2007); In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988).
In view of the above, Petitioner has not met its burden to establish a
reasonable likelihood it would prevail in showing at least one of claims 1, 3,

element of [a challenged] claim is found in the prior art patents or printed
publications relied upon.”).
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5–11, 14, and 15 would have been obvious under 35 U.S.C. § 103(a) over
Schulte and the knowledge of one of ordinary skill in the art.
H. Ground 8: Obviousness of Claims 1, 3, 5–11, 14, and 15 under
35 U.S.C. § 103(a) over Schulte and Stewart
Petitioner relies on Stewart for a teaching of “surfactants in cleaning,
including for use as a ‘dry cleaning aid.’” Pet. 18 (citing Ex. 1009, 2:48).
Petitioner does not explain how Stewart provides a teaching or suggestion of
any claim 1 limitations, or how Stewart cures any deficiency in Schulte with
respect to claim 1. See id. at 49–51. Accordingly, for the same reasons
discussed in Section IV.G., above, Petitioner has not met its burden to
establish a reasonable likelihood it would prevail in showing at least one of
claims 1, 3, 5–11, 14, and 15 would have been obvious under 35 U.S.C.
§ 103(a) over Schulte and Stewart.
V. CONCLUSION
For the above reasons, Petitioner has not demonstrated there is a
reasonable likelihood it would prevail in showing the unpatentability of at
least one of the challenged claims.
VI. ORDER
For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

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PETITIONER:

Rod S. Berman
Gregory S. Cordey
JEFFER MANGELS BUTLER & MITCHELL, LLP
rberman@jmbm.com
gcordrey@jmbm.com

PATENT OWNER:

Christopher P. Bruenjes
Ronald L. Grudziecki
DRINKER BIDDLE & REATH LLP
christopher.bruenjes@dbr.com
ronald.grudziecki@dbr.com