PTAB

IPR2013-00053

Corning Inc v. DSM IP Assets BV

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: RADIATION CURABLE RESIN COMPOSITION
  • Brief Description: The ’543 patent discloses radiation-curable compositions, particularly for optical fiber coatings, comprising an oligomer, a reactive diluent, and a photoinitiator package of at least three free radical photoinitiators. The invention is characterized by specific requirements for the absorption spectra of the photoinitiators and the curing properties of the final composition.

3. Grounds for Unpatentability

Ground 1: Anticipation over Zahora - Claims 35–39, 44, and 50–57 are anticipated by Zahora.

  • Prior Art Relied Upon: Zahora (WO 98/50317), with supporting evidence from Snowwhite (WO 98/47954) and Ciba (a 1995 Formulator's Guide).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Example VII and Carrier System AA of Zahora inherently disclose every limitation of the challenged claims. These examples describe radiation-curable ink compositions containing all three required components: urethane-acrylate oligomers, reactive diluents (e.g., 1,6-hexamethylene diacrylate), and at least three free radical photoinitiators (Irgacure 907, Irgacure 819, and benzophenone). Petitioner provided test data to demonstrate that Zahora’s photoinitiator package meets the specific absorption maxima requirements of claim 35. Further, data from Zahora itself showed that its compositions achieve a percentage reacted acrylate unsaturation (%RAU) of 67%-84%, satisfying the limitations of claims 36–38 and 50–52. Petitioner also argued that the relative concentrations of photoinitiators in Zahora's Example VII satisfy claim 39 and that the presence of 1,6-hexamethylene diacrylate anticipates claim 44.
    • Key Aspects: The core of this ground relied on Petitioner’s own testing of the photoinitiators disclosed in Zahora to prove they met the spectral properties recited in the claims, arguing these properties were inherent even if not explicitly described. For claims 53 and 54, relating to faster cure speed, Petitioner used data from Snowwhite to show that Zahora's combination of photoinitiators (Irgacure 819 and 907) was known to be more efficient than the comparator recited in the claims.

Ground 2: Anticipation over Murphy - Claims 35, 39, 44, and 53–57 are anticipated by Murphy.

  • Prior Art Relied Upon: Murphy (WO 01/47823).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Examples 8-13 and Experiments a-d of Murphy, which describe optical fiber coating compositions, anticipate the challenged claims. These examples were shown to contain the requisite oligomers (e.g., a bisphenol A epoxy acrylate oligomer), a reactive diluent (1,6-hexanediol diacrylate), and a package of four photoinitiators (including Irgacure 819 and Irgacure 907). As with the Zahora ground, Petitioner relied on its testing to demonstrate that Murphy's photoinitiators inherently meet the claimed absorption maxima limitations of claim 35. The specific concentrations of photoinitiators in Murphy’s examples were argued to meet the ratios required by claim 39, and the use of 1,6-hexanediol diacrylate was asserted to anticipate claim 44. The faster curing speed limitations of claims 53 and 54 were allegedly met for the same reasons articulated in the Zahora ground regarding the superior efficiency of the Irgacure 819/907 combination.

Ground 3: Obviousness over Zahora, Shustack, and Coady - Claim 40 is obvious over Zahora in view of Shustack and Coady.

  • Prior Art Relied Upon: Zahora (WO 98/50317), Shustack (Patent 5,352,712), and Coady (Patent 5,219,896).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Zahora’s compositions provide the base formulation of claim 35, from which claim 40 depends. Claim 40 adds the requirement that the reactive diluent is propoxylated nonyl phenol acrylate (PNPA). While Zahora does not explicitly name PNPA, it generally teaches using monomers with acrylate functionality as reactive diluents.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to use PNPA in Zahora’s composition. Coady expressly taught the use of alkoxylated phenol acrylates, including PNPA, as reactive diluents in coating compositions for optical fibers. Furthermore, Shustack taught the desirability of making such coatings as hydrophobic as possible. Because PNPA was known as one of the more hydrophobic reactive diluents, a POSITA would combine the teachings to substitute a diluent in Zahora with PNPA to improve hydrophobicity, a known desirable property.
    • Expectation of Success: The combination involved substituting a known type of component (reactive diluent) with another well-known reactive diluent (PNPA) for a predictable improvement (increased hydrophobicity), leading to a high expectation of success.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including claims 41–43, 46, and 47 over Zahora in view of Szum; claims 45 and 48 over Zahora in view of Kimura; and similar combinations based on Murphy as the primary reference. These grounds relied on analogous reasoning that a POSITA would have been motivated to modify the base compositions of Zahora or Murphy with specific oligomer components taught by Szum or Kimura to achieve predictable properties.

4. Key Claim Construction Positions

  • %RAU (percentage reacted acrylate unsaturation): Petitioner argued that the claim language "when cured at a dose of about 4.4 mJ/cm²" does not require the claimed composition to be cured. Instead, it should be construed as a test protocol for measuring the properties of the radiation-curable composition. The claims are directed to the uncured composition's capability to achieve a certain %RAU value if subjected to that specific curing condition.
  • Absorption "Maxima": Petitioner contended that determining the absorption maxima within a specified range (e.g., 240 to 360 nm) would be understood by a POSITA to involve measuring the absorption spectrum, identifying each valley, and then finding the wavelength with the highest absorbance on either side of each valley within that range.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inherent Properties of Prior Art: A central technical contention was that the prior art compositions of Zahora and Murphy, while not explicitly disclosing the claimed spectral and cure-rate properties, inherently possess them. Petitioner asserted that it conducted its own laboratory testing on the photoinitiators and compositions described in the prior art to generate the data proving these inherent properties and overcoming what it characterized as "obscure claim limitations" that prevented the patent examiner from finding these references during prosecution.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 35-57 of the ’543 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.