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 discloses a puncture sealing agent for tires and a process for its production. The composition comprises a rubber latex, an adhesive agent, and an anti-freezing agent, with a key aspect being the use of glycerin as the anti-freeze agent, noted as having a higher density than typical agents like ethylene glycol.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haifeng anticipated every limitation of the challenged claims. Haifeng disclosed a "Special-Effect Automatic Tire Sealant" prepared by mixing a natural or synthetic adhesive with additives including an antifreeze. Specifically, Haifeng taught using either natural or synthetic rubber latex, explicitly listed "glycerin" as a possible antifreeze, and provided an exemplary formulation where the ratio of glycerin to the total composition was 8.6% by weight, which falls within the claimed ranges of 5-75% (claim 1) and 5-50% (claim 17). Haifeng also disclosed using polyvinyl alcohol as an adhesive agent and nitrites as a corrosion inhibitor, meeting the limitations of dependent claims 2 and 3. For claim 4, Haifeng taught including fibers ("asbestos" and "natural and synthetic fibers"). The method steps of claim 17 were also disclosed, including mixing the components in stages.

Ground 2: Obviousness of Claims 1-4, 9, 17, and 20

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363) in view of Boxi (Chinese Patent No. CN 107954).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that, even if not anticipated, the claims were obvious over the combination of Haifeng and Boxi. Both references disclosed tire sealants with the core components. Haifeng provided a base composition with rubber latex and glycerin. Boxi, titled "Strong Antifreeze Sealant for Tire," also disclosed a sealant comprising a binder (including latex) and an antifreeze, specifically teaching a glycerol concentration of 5-40%. This teaching reinforced the rationale for using glycerin in the claimed concentration range. Both references further disclosed the use of fibrous fillers (Haifeng, Boxi), adhesive agents (Haifeng, Boxi), and corrosion inhibitors (Haifeng, Boxi), rendering the dependent claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Haifeng and Boxi to create an improved tire sealant. Haifeng recognized that its sealant could be "adjusted according to the requirements of different regions," and Boxi's stated object was to provide a sealant with "a good sealing effect at a low temperature." A POSITA would combine these teachings to adjust Haifeng's formulation for improved cold weather performance using the specific glycerol concentrations taught by Boxi.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved using known components (latex, glycerin, fibers) for their known functions in tire sealants, which would yield predictable results.

Ground 5: Obviousness of Claims 26, 27, 29, 30, and 32

  • Prior Art Relied Upon: Haifeng (Chinese Patent No. CN 1062363) in view of Wong (Patent 5,856,376) and further in view of Jaksa (Patent 5,908,145).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims requiring "one or more rubber chunks." Petitioner argued that Haifeng and Wong together taught a sealant with fibers, a thickening agent, and glycerin as an antifreeze. Haifeng disclosed fibers and glycerin, while Wong taught a sealant with a cellulosic thickener, glycerin as a freeze preventative, and a latex. To meet the "rubber chunks" limitation, Petitioner pointed to Jaksa, which explicitly disclosed that common tire sealants are "viscous fluids, with chunks of natural rubber injected through the tire valve to seal punctures." Wong also taught using "crushed and ground, recycled post-consumer tire material tire rubber" as a polymeric component. The combination of these references thus rendered independent claim 26 obvious.
    • Motivation to Combine: A POSITA, starting with a base sealant like Haifeng's, would be motivated to improve its physical sealing capabilities. It would be an obvious design choice to incorporate known thickening agents (as taught by Wong) to improve viscosity and to add physical plugging agents like "chunks of natural rubber" (as taught by Jaksa) or ground rubber (as taught by Wong) to more effectively seal larger punctures.
    • Expectation of Success: Combining these known elements for their established purposes—thickeners for viscosity, rubber chunks for physical plugging—posed no technical challenges and would have led to the predictable result of an enhanced sealant.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 1-5, 9, 17, and 20 over Haifeng in view of Kishida (Application # 2003/0050365); claims 1-4, 9, 17, and 20 over Boxi in view of Kishida; and claims 26, 29, 30, and 32 over Boxi in view of Wong and Jaksa. These grounds relied on similar arguments about combining known sealant components for their predictable functions.

4. Key Claim Construction Positions

  • Petitioner argued that the term "rubber chunks" recited in claim 26 should be construed according to its ordinary and customary meaning to a POSITA, which is "solid pieces of rubber." This construction was asserted to be consistent with the patent's disclosure and dictionary definitions. This interpretation was critical for mapping prior art like Jaksa, which discloses "chunks of natural rubber," directly onto the claim 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.