PTAB

IPR2019-01202

TryDel Research Pty Ltd v. Illinois Tool Works Inc

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1. Case Identification

2. Patent Overview

  • Title: Puncture Sealing Agent for a Tire and Process for Producing the Same
  • Brief Description: The ’041 patent is directed to a puncture sealing agent composition designed to be introduced into a tire to seal punctures from within. The core composition includes a rubber latex, an adhesive agent, and an anti-freezing agent, with the specification highlighting the use of glycerin as a substitute for more typical anti-freeze agents like ethylene glycol.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 9, 17, and 20 by Haifeng

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haifeng, which describes a "Special-Effect Automatic Tire Sealant," explicitly discloses every limitation of these claims. Haifeng teaches a sealant prepared by mixing a natural or synthetic rubber latex with additives including an anti-freeze. Specifically, Haifeng lists glycerin as a possible anti-freeze agent. Petitioner calculated that Haifeng's exemplary formulation contains 8.6% glycerin by weight, which falls within the 5-75% range recited in claim 1. Haifeng also teaches the use of polyvinyl alcohol (an adhesive agent), fibers (asbestos and synthetic fibers), nitrites (an anti-corrosion agent), and surfactants, thereby allegedly anticipating the limitations of the dependent claims. Finally, Petitioner asserted that Haifeng’s disclosed two-step mixing process meets the limitations of method claim 17.

Ground 2: Obviousness of Claims 1-4, 9, 17, and 20 over Haifeng in view of Boxi

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363) and Boxi (Chinese Patent No. CN 107954).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Haifeng discloses the fundamental sealant composition, including rubber latex and glycerin. Boxi, titled "Strong Antifreeze Sealant for Tire," provides further teachings on sealants containing a binder (latex), filler, and an antifreeze, disclosing an exemplary formulation with a glycerol concentration of "5-40%." Together, the references were argued to teach all elements of the challenged claims, including the claimed ranges for glycerin and other additives.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these teachings to improve a known product for a known purpose. Haifeng acknowledged that prior art sealants were "not very satisfactory." A POSITA seeking to improve the cold weather performance of Haifeng's sealant would have been motivated to consult Boxi, which addresses that specific problem, and optimize the glycerin concentration based on Boxi's explicit teachings.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves adjusting the concentration of a known anti-freeze agent (glycerin) in a conventional tire sealant base, which would yield the predictable result of improved low-temperature performance.

Ground 3: Obviousness of Claims 26, 27, 29, 30, and 32 over Haifeng in view of Wong and Jaksa

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363), Wong (Patent 5,856,376), and Jaksa (Patent 5,908,145).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets the claims reciting "rubber chunks." Petitioner argued that Haifeng provides the base sealant with rubber latex and glycerin. Wong teaches improving sealant performance by adding a thickener (e.g., xanthan gum) to achieve a desirable viscosity and prevent "puddling," and also discloses using ground, recycled tire rubber as a polymeric material. Jaksa explicitly teaches that common tire sealants are viscous fluids containing "chunks of natural rubber" injected into the tire to seal punctures. The combination of these references was argued to teach a sealant with fibers and glycerin (Haifeng), a thickener (Wong), and rubber chunks (Jaksa), meeting all limitations of claim 26 and its dependents.
    • Motivation to Combine: A POSITA would combine these references to solve known deficiencies in prior art sealants. To improve the basic sealant of Haifeng, a POSITA would incorporate a thickener taught by Wong to improve dispersion and stability. To enhance the sealant's ability to plug larger holes, the POSITA would be motivated to add larger particulates, such as the "chunks of natural rubber" explicitly disclosed for this purpose by Jaksa.
    • Expectation of Success: The combination involves incorporating conventional additives (thickeners, rubber chunks) into a known sealant formulation. This would be a routine design choice for a POSITA, with a high and predictable expectation of achieving a sealant with both improved viscosity and enhanced sealing capabilities.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on Haifeng in view of Kishida (Application # 2003/0050365) and Guihe; Boxi in view of Kishida; and Boxi in view of Wong and Jaksa. These grounds relied on similar arguments regarding the combination of known sealant components to achieve predictable results.

4. Key Claim Construction Positions

  • Petitioner argued that the term "rubber chunks" in independent claim 26 should be given its plain and ordinary meaning, which a POSITA would understand to be "solid of pieces of rubber." This construction was asserted to be consistent with the patent's disclosure and critical to showing that prior art like Jaksa, which discloses "chunks of natural rubber," teaches this limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 9, 17, 20, 26, 27, 29, 30, and 32 of the ’041 patent as unpatentable.