PTAB

IPR2019-00867

Reactive Surfaces Ltd LLP v. Toyota Motor Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Composition for Fingerprint Removal
  • Brief Description: The ’740 patent discloses compositions and methods for facilitating fingerprint removal from surfaces. The technology involves associating a lipase enzyme with a substrate or coating, where the lipase enzymatically degrades lipid components of a fingerprint into smaller, more volatile molecules that can evaporate.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over McDaniel in view of Adams

  • Prior Art Relied Upon: McDaniel (Application # 2009/0238811) and Adams (Application # 2007/0282070).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McDaniel taught surface treatments and polymeric materials comprising a lipolytic enzyme (lipase) for cleaning lipid-based contaminants, anticipating the core concept of an enzyme-based self-cleaning film. However, McDaniel did not expressly disclose that its automotive coating was formed from a crosslinkable non-aqueous organic solvent-borne resin. Petitioner asserted that Adams supplied this missing element by teaching coating compositions for automotive applications that explicitly comprise a crosslinkable, solvent-borne, two-component polyurethane system with a hydroxy-functionalized acrylic resin. The dependent claims were argued to be obvious as McDaniel taught the recited functional groups (hydroxyl, isocyanate) and polyacrylate resins.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve upon McDaniel’s enzymatic coating. McDaniel disclosed that its coatings could be used in automotive applications, which require specific properties like weatherability and superior appearance. Adams provided a well-known, high-performance, two-part solvent-borne acrylic coating system specifically for such applications. A POSITA would have been motivated to incorporate McDaniel’s self-cleaning enzyme technology into the superior and suitable coating vehicle disclosed by Adams to achieve a durable, self-cleaning automotive finish.
    • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success, as the combination amounted to using a known enzyme in a known coating system for its expected purpose, yielding only predictable results.

Ground 2: Claims 8-14 are obvious over McDaniel in view of Fourquier and further in view of Callstrom

  • Prior Art Relied Upon: McDaniel (Application # 2009/0238811), Fourquier (Patent 5,420,179), and Callstrom (Patent 5,492,821).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claims directed to a polymeric substrate rather than a coating. Petitioner asserted McDaniel taught incorporating enzymes into polymeric materials like plastics. Fourquier taught the formation of molded polymeric substrates from a crosslinkable, non-aqueous, solvent-borne resin (an unsaturated polyester and hydroxylated alkyl methacrylate polymer). To ensure the enzyme was properly associated with and stabilized on the substrate, Petitioner introduced Callstrom, which taught methods for covalently bonding enzymes, including lipase, to polymer structures containing hydroxyl groups to preserve their catalytic activity.
    • Motivation to Combine: A POSITA looking to create the self-cleaning polymeric substrates of McDaniel would turn to Fourquier for a known method of forming such articles from suitable resins. Since enzyme stability is critical, the POSITA would be further motivated to consult Callstrom, which explicitly addressed stabilizing lipase on polymers—particularly those with hydroxyl groups, as disclosed in Fourquier. The shared utility of the references (McDaniel and Fourquier both mention applications like kitchen utensils) would provide a direct impetus for the combination.
    • Expectation of Success: Petitioner argued success was expected because the combination involved applying known enzyme immobilization and stabilization techniques (Callstrom) to a known polymer substrate formation process (Fourquier) to achieve the known goal of an enzyme-active material (McDaniel).

Ground 3: Claims 15-17 are obvious over McDaniel in view of Adams and further in view of Tian

  • Prior Art Relied Upon: McDaniel (Application # 2009/0238811), Adams (Application # 2007/0282070), and Tian (Application # 2004/0242831).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged claims to a curable composition comprising a solvent-borne, two-component polyurethane coating material containing lipase. Petitioner established the foundation with McDaniel (lipase in coatings) and Adams (two-component solvent-borne polyurethane systems). Tian was introduced because it explicitly disclosed preparing polyurethane coatings using polyol polymers that can contain added lipase, noting its use as a catalyst provides for "green chemistry" and can be left in the final composition. Tian’s working example disclosed a cross-linkable, non-aqueous, solvent-borne polyol containing dispersed lipase.
    • Motivation to Combine: A POSITA would have been motivated to combine the references because McDaniel and Tian both addressed coatings for surfaces like floors and walls to aid in cleaning up lipid spills. To create a more stable and effective lipase-containing polyurethane coating than generally suggested by McDaniel, a POSITA would incorporate the specific lipase-containing polyol compositions of Tian into the two-component coating system of Adams. Tian’s teachings on increased hardness and stability would further motivate this combination.
    • Expectation of Success: Petitioner argued that combining these elements was merely the application of known components to achieve their expected functions, with a high likelihood of success.

4. Key Claim Construction Positions

  • "fingerprint": Petitioner argued that the patentee acted as its own lexicographer, defining "fingerprint" not merely as a mark from a finger, but broadly as any "bioorganic stain, mark, or residue left behind after an organism touches a substrate or coating." This definition includes residues from palms, feet, hair, or even cooking fats.
  • "facilitating fingerprint removal": Petitioner proposed this term be construed as "enabling a bioorganic material deposited by an organism through touching a surface to transition from an initial quantity...to a lesser quantity." This construction focuses on the reduction of the bioorganic material itself.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended that a key prosecution amendment rendered a central claim limitation conditional and non-limiting. The independent claims were amended to add the proviso "that when the lipase is triacylglycerol lipase, the triacylglycerol lipase is from" a specific list of sources. Petitioner argued the term "when" is synonymous with "if," making the limitation optional and allowing it to be omitted. This, Petitioner asserted, was a critical error the Examiner failed to appreciate during prosecution.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial, asserting that the Examiner made several clear errors during prosecution. These included failing to properly consider the teachings of the McDaniel reference (which was cited but not applied), failing to apply the patent's explicit definition of "fingerprint," and misunderstanding the conditional nature of the "when" limitation. Furthermore, Petitioner argued that the asserted grounds were materially different from the prior art of record, as the key secondary references (Adams, Fourquier, Callstrom, Tian) were never considered by the Examiner, and the new combinations presented fundamentally different invalidity arguments.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-17 of the ’740 patent as unpatentable under 35 U.S.C. §103.