PTAB

IPR2018-01194

Reactive Surfaces Ltd LLP v. Toyota Motor Corp

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Protein-Polymer Composite Materials and Methods
  • Brief Description: The ’873 patent discloses coating compositions that include bioactive proteins, such as the enzyme amylase, dispersed within a two-component, solvent-borne polymer resin. These compositions are cured to form a protein-polymer composite material on a surface, which facilitates the removal of bioorganic stains.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over McDaniel in view of Selvig.

  • Prior Art Relied Upon: McDaniel (Application # 2004/0109853) and Selvig (Patent 5,919,689).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McDaniel taught all elements of the challenged claims except for the specific use of amylase. McDaniel disclosed a multi-pack (i.e., two-component) coating system with a biomolecule, such as a hydrolase enzyme, dispersed in a polymer resin. McDaniel described that its compositions could comprise various resins, including acrylics, and crosslinkers, including polyisocyanates. To supply the missing element, Petitioner pointed to Selvig, which explicitly taught the use of alpha-amylase within a protein-polymer coating composition, such as a polyurethane, for antifouling purposes.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because both were directed to the same technical field of enzyme-containing polymer coatings. McDaniel taught its compositions were useful for marine coatings that resist fouling. Selvig taught that alpha-amylase was effective in marine antifouling compositions. A POSITA would therefore have been motivated to incorporate the specific, effective enzyme (alpha-amylase) from Selvig into the general two-component coating system of McDaniel to achieve improved antifouling properties, a goal common to both references.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because amylases are a known sub-category of hydrolases, a class of enzymes generally disclosed by McDaniel. One would expect an amylase to function under conditions similar to those disclosed for other hydrolases in McDaniel's coating system.

Ground 2: Claims 1, 4, and 5 are anticipated by Schneider; Claims 2 and 3 are obvious over Schneider in view of Adams.

  • Prior Art Relied Upon: Schneider (Application # 2005/0147579) and Adams (Application # 2007/0282070).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Schneider anticipated independent claim 1 and dependent claims 4 and 5. Schneider disclosed protein-polymer coating compositions containing enzymes to prevent microbial growth, explicitly teaching the use of polysaccharide-degrading enzymes including alpha-amylase. Schneider also taught that its compositions could be solvent-based, contain additives, and be formulated from various resins and crosslinkers.
    • For claims 2 and 3, which required the resin to be a hydroxyl-functionalized acrylate and to comprise a polyisocyanate crosslinker, Petitioner argued these limitations were obvious in view of Adams. While Schneider disclosed acrylic resins, it did not specify a hydroxyl-functionalized variant. Adams taught a two-component, solvent-borne coating composition that explicitly used a hydroxyl-functionalized acrylic copolymer as the primary resin and a polyisocyanate as the crosslinker to create durable coating films.
    • Motivation to Combine (for claims 2 and 3): A POSITA would combine Schneider and Adams because both related to coating compositions for similar industrial, architectural, and automotive applications. A POSITA would have been motivated to use the specific, well-established, high-performance resin and crosslinker system from Adams within the enzyme-based coating framework of Schneider. The motivation was to improve the physical properties of Schneider’s coating, such as film integrity and cure time, by employing a known, compatible, and effective resin system.
    • Expectation of Success (for claims 2 and 3): Success was expected because the combination involved incorporating a known enzyme system (Schneider) into a standard, widely used two-component polymer coating system (Adams). There was no technical incompatibility that would have dissuaded a POSITA from making this combination.

4. Key Claim Construction Positions

  • "two component non-aqueous organic solvent-borne polymer resin": Petitioner argued this central term from claim 1 was confusing and lacked a clear antecedent basis in the specification. As used in the claim, "two component" modified "polymer resin," which Petitioner contended was inconsistent with the ordinary meaning in the art where "two component" refers to a system (e.g., resin + crosslinker), not the resin itself. Based on the patent's disclosure of mixing a resin with a crosslinker, Petitioner proposed that the term should be construed to mean "a non-aqueous organic solvent-borne polymer resin capable of being combined with another material composition to cause a change in the final composition of the polymer resin." Petitioner asserted its invalidity arguments applied under this construction and other reasonable interpretations.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner challenged the ’873 patent’s assertion of "unexpectedly high stability" for its solvent-borne coatings compared to water-borne coatings. Petitioner argued this comparison, described in the patent, was fundamentally flawed. As both coating types were applied with the same wet film thickness, the solvent-borne example—having a higher solids content—would result in a greater final dried film thickness. It is well known in the art that a thicker coating provides a greater relative amount of active ingredient (the enzyme), which would naturally lead to different, and likely increased, enzyme activity and stability. Therefore, the "unexpected" result was, in fact, an obvious and expected outcome of the testing methodology.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’873 patent as unpatentable.