PTAB

IPR2019-00867

Reactive Surfaces Ltd., LLP v. Toyota Motor Corporation

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1. Case Identification

2. Patent Overview

  • Title: Compositions and Methods for Fingerprint Removal
  • Brief Description: The ’740 patent discloses compositions and methods for facilitating the removal of fingerprints from a surface. The technology involves associating a lipase enzyme with a substrate or coating, which enzymatically degrades components of a fingerprint, such as lipids, into smaller, more volatile molecules that can then vaporize.

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 the core concept of the invention: using a lipolytic enzyme (lipase) in surface treatments and polymeric materials to degrade lipids, which aligns with the ’740 patent’s broad definition of "fingerprint" as a bioorganic stain. McDaniel disclosed solvent-borne coatings for applications including "self-cleaning" films. However, McDaniel did not explicitly teach a crosslinkable non-aqueous organic solvent-borne resin. Petitioner contended that Adams, an analogous reference for automotive coatings, supplied this missing element. Adams described a two-component, non-aqueous, solvent-borne coating system with a crosslinkable, hydroxy-functionalized acrylic resin that cures with an isocyanate component, directly mapping to the resin system of claim 1.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine McDaniel and Adams to create a durable, self-cleaning coating for automotive applications. McDaniel suggested its enzyme technology could be used in automotive coatings and noted the need for specific properties like weatherability. Adams provided a well-known two-component polyurethane system to achieve such properties. Combining McDaniel's functional enzyme with Adams's high-performance coating was presented as a predictable way to create a functional, weather-resistant, self-cleaning surface.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved incorporating a known functional additive (lipase) into a standard, high-performance automotive coating system to achieve the predictable, additive benefits of both technologies.

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 challenged claims directed to a "polymeric substrate" rather than a coating. Petitioner asserted McDaniel again as the primary reference for using enzymes in polymeric materials for cleaning. To teach the claimed substrate, Petitioner cited Fourquier, which disclosed liquid resinous compositions for molding objects, including a crosslinkable non-aqueous organic solvent-borne polymer resin (e.g., hydroxylated alkyl methacrylate polymer). To address the association of the lipase with this substrate, Petitioner introduced Callstrom, which taught methods for stabilizing proteins, including lipase, by covalently bonding them to polymer structures containing hydroxyl groups—the very type of polymer disclosed by Fourquier.
    • Motivation to Combine: A POSITA would be motivated to combine these references to create shaped polymeric articles with self-cleaning capabilities, an application area common to both McDaniel (kitchen equipment) and Fourquier (kitchen utensils). When faced with the task of integrating McDaniel's enzyme into Fourquier's hydroxyl-containing polymer substrate, a POSITA would have naturally turned to a known method like that in Callstrom for covalently immobilizing enzymes onto such polymers to ensure stability and functionality.
    • Expectation of Success: The combination represented a straightforward application of a known enzyme immobilization technique (Callstrom) to a suitable polymer system (Fourquier) to achieve a desired functional property (McDaniel's enzymatic cleaning), and thus would have been pursued with a high expectation of success.

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 targeted claims for a "curable composition" comprising a "solvent-borne two-component polyurethane coating material." Petitioner used McDaniel and Adams, as in Ground 1, to establish the base invention of a two-component polyurethane coating containing a lipase. Petitioner then introduced Tian to explicitly teach the dispersion of lipase into the coating. Tian disclosed polyol polymer compositions, which are precursors for urethanes, that can contain lipase as an added component to promote "green chemistry." Tian's working examples showed a cross-linkable, non-aqueous, solvent-borne polyester polyol with dispersed lipase.
    • Motivation to Combine: Petitioner argued a POSITA seeking to implement the lipase-enhanced polyurethane coating of McDaniel/Adams would be motivated by Tian's disclosure that lipase can be directly incorporated into urethane precursors. Tian provided an express teaching for adding lipase into the exact type of chemical system, providing a clear path for a POSITA to arrive at the claimed invention. The shared application space of coatings for floors and walls in McDaniel and Tian provided further motivation.
    • Expectation of Success: Because Tian expressly taught the inclusion of lipase in urethane coating precursors without detriment to the final product, a POSITA would have had a very high expectation of success in combining the teachings to produce the claimed composition.

4. Key Claim Construction Positions

  • "fingerprint": Petitioner argued that the patentee acted as its own lexicographer, defining "fingerprint" not narrowly as a mark from a human finger, but broadly as any "bioorganic stain, mark, or residue left behind after an organism touches a substrate or coating." This broad construction was critical to Petitioner's argument, as it allowed prior art discussing the cleaning of general lipid stains to be directly applicable to the claims.
  • "when" Proviso: Petitioner contended that the claim language "with the proviso that when the lipase is triacylglycerol lipase, the triacylglycerol lipase is from..." was conditional and non-limiting. By construing "when" as "if," Petitioner argued this limitation only applied in the specific instance a certain type of lipase was used and did not narrow the overall scope of the claim, as other lipases could be used without restriction. This was intended to neutralize a distinction added during prosecution to overcome prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented arguments corresponding to the Becton, Dickinson factors to argue against discretionary denial and in favor of institution.
  • Petitioner contended the Examiner made significant errors during prosecution, primarily by failing to substantively consider the McDaniel reference. Although cited, McDaniel was never applied, despite allegedly disclosing the core inventive concept and verbatim language for the claimed lipase species.
  • Furthermore, Petitioner asserted that the key secondary references central to its petition—Adams, Fourquier, Callstrom, and Tian—were never cited or considered during the original examination.
  • Consequently, Petitioner argued that its grounds were materially different from and not cumulative of the art considered by the PTO, presenting a fuller and more relevant view of the prior art landscape that warranted institution of the IPR.

6. Relief Requested

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