Nestle Purina PetCare Companyv.Oil-Dri Corporation of America

Patent Trial and Appeal Board

Jun 20, 2016

08914406 (P.T.A.B. Jun. 20, 2016)

Trials@uspto.gov Paper No. 37
571-272-7822 Entered: June 20, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NESTLÉ PURINA PETCARE COMPANY,
Petitioner,

v.
OIL-DRI CORPORATION OF AMERICA,
Patent Owner.
____________

Case IPR2015-00737
Patent 5,975,019

Before CARL M. DEFRANCO JR., JO-ANNE M. KOKOSKI, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner Nestlé Purina PetCare Company filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1–13, 30, and 32 of U.S.
Patent No. 5,975,019 (Ex. 1001, “the ’019 patent”) pursuant to 35 U.S.C.
§§ 311–319. Patent Owner Oil-Dri Corporation of America filed a
Preliminary Response. Paper 9. On July 9, 2015, we instituted an inter
partes review of claims 1–13, 30, and 32 on certain grounds of
unpatentability alleged in the Petition. Paper 12 (“Dec.”). After institution
of trial, Patent Owner filed a Patent Owner Response (Paper 17, “PO Resp.”)
and Petitioner filed a Reply (Paper 19, “Reply”). Pursuant to authorization
from the Board, Patent Owner filed a Sur-Reply (Paper 22, “Sur-Reply”).
Patent Owner filed a Motion to Exclude. Paper 25. Petitioner
opposed Patent Owner’s Motion to Exclude (Paper 30), and Patent Owner
filed a Reply (Paper 32). Patent Owner also filed a Motion for Observation
(Paper 24) on certain cross-examination testimony of Petitioner’s declarant,
Mr. Phillip Greene, and Petitioner filed a Response (Paper 31).
An oral hearing was held on March 1, 2016. A transcript of the
hearing has been entered into the record. Paper 36 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine that Petitioner has not shown by a preponderance of
the evidence that the claims for which trial was instituted, namely, claims 1–
13, 30, and 32, are unpatentable.
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A. Related Matters
The parties indicate that the ’019 patent is the subject of the following
district court proceeding: Oil-Dri Corp. of America v. Nestle Purina PetCare
Co., Case No. 1:15-cv-01067 (N.D. Ill.). Pet. 1; Paper 7, 1.
B. The ’019 Patent
The ’019 patent, titled “Clumping Animal Litter,” issued on
November 2, 1999. The ’019 patent is directed to a clump-forming, clay-
based composition suitable for use as animal litter. Ex. 1001, 1:4–6. The
’019 patent describes a “clumping animal litter utilizing the interparticle
interaction of a swelling clay, such as sodium bentonite, in combination with
a non-swelling clay material.” Id. at Abstract. The non-swelling clay
material can be “any of the commonly known clays;” more specifically, an
“absorbent clay material which is particularly useful in practicing the present
invention is a non-swelling smectite” that contains calcium and/or
magnesium in the form of exchangeable cations. Id. at 3:37–38, 3:51, 4:3–4.
The patent discloses a composition of sixty percent (60%) by weight, or less,
of sodium bentonite “after the judicious selection of particle size distribution
such that the mean particle size of the non-swelling clay material is greater
than the mean particle size of the sodium bentonite.” Id. at Abstract.
C. Challenged Claims
Of the challenged claims, claims 1 and 30 are independent. Claims 2–
13 depend, directly or indirectly, from claim 1. Claim 32 depends from
claim 30.
Claims 1 and 30 of the ’019 patent are reproduced below:
1. A clumping animal litter comprising:
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a. a particulate non-swelling clay material having a
predetermined mean particle size no greater than about 4
millimeters; and
b. a particulate swelling clay having a predetermined mean
particle size no greater than about 2 millimeters, wherein
the mean particle size of the non-swelling clay material is
greater than the mean particle size of the swelling clay.

30. A method for making a clumping animal litter comprising the
steps of:
a. combining a particulate non-swelling clay material with a suitable
particulate swelling clay to form a composition wherein the mean
particle size of the particulate non-swelling clay material is greater
than the mean particle size of the particulate swelling clay;
b. mixing the composition to effect a substantially uniform
distribution of the two materials;
c. packaging a quantity of the mixed composition.

Ex. 1001, 9:37–46, 11:3–12.
D. Prior Art References Relied Upon by Petitioner
Petitioner relies on the following prior art:
1. United States Patent No. 5,386,803, issued February 7, 1995
(“Hughes,” Ex. 1006);
2. United States Patent No. 5,458,091, issued October 17, 1995
(“Pattengill,” Ex. 1008).

E. Instituted Ground of Unpatentability
References Basis Claims Challenged
Hughes and Pattengill § 103 1–13, 30, and 32
II. ANALYSIS
A. Claim Construction
The Board interprets claims in an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
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they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude that Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 890 (mem.) (2016). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning in view of the specification, as would be understood by one of
ordinary skill in the art at the time of the invention. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
In instituting trial, we expressly construed the term “mean particle
size (MPS)” to mean “the average of a representative sample of particle
sizes or groupings of particle sizes.” Dec. 5–7. Neither party specifically
addresses or contests this claim construction, and we see no reason to
modify it in light of the record developed at trial. Accordingly, we maintain
our construction of the term “mean particle size (MPS)” to mean “the
average of a representative sample of particle sizes or groupings of particle
sizes.”
All other terms are accorded their ordinary and customary meaning as
would be understood by one of ordinary skill at the time of the invention.
B. Obviousness Arguments
Petitioner argues that claims 1–13, 30, and 32 are obvious over the
combination of Hughes and Pattengill. Pet. 52–60. Petitioner relies on the
Declaration of John Hughes (Ex. 1005, the “Hughes Declaration”),
submitted with the Petition, and the Declaration of Phillip Greene (Ex. 1016,
the “Greene Declaration”), submitted with the Reply. In opposition to
Petitioner’s contentions, Patent Owner relies on the Declaration of Marc
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Herpfer (Ex. 2013) and the Declaration of Dr. Robert D. DeLuca (Ex. 2015),
submitted with the Patent Owner Response.
In resolving the question of the obviousness of the claims, we
consider the following underlying factual determinations: (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and (4) secondary
considerations of non-obviousness. See Graham v. John Deere Co., 383
U.S. 1, 17 (1966). Petitioner bears the burden of establishing obviousness of
the challenged claims by a preponderance of the evidence. 35 U.S.C.
§ 316(e).
i. The Prior Art
a. Hughes (Ex. 1006)
Hughes is directed to a composition and method of absorbing animal
dross. Ex. 1006, Abstract. Hughes discloses a composition comprising a
combination of bentonite clays, “particularly about 1% to about 50% by
weight sodium bentonite, and about 50% to [about] 99% by weight Fuller's
Earth, or calcium bentonite,” that absorbs animal dross and related liquids.
Id. Hughes provides that “the sodium and calcium bentonite clays in the
litter box absorbent composition have a particle size ranging from about 50u
(microns) to about 3350u in diameter,” and “preferably in a particle size
ranging from about 600u to about 3350u in diameter; or, in other words, in a
particle size of from about 6 mesh to about 100 mesh.” Id. at 7:6–11.
Hughes also provides that “the sodium and calcium bentonite clays
should be present in the composition in particle sizes across substantially the
entire range of about 600u to about 3350u because the smaller diameter
water-swellable bentonite particles, upon being wetted, swell and serve as
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‘bridges’ between larger, wetted bentonite particles.” Id. at 7:20–26.
Hughes allows for other litter box absorbents, such as clays, sand, or
cellulose-based materials, but cautions that any “any optionally added
ingredient cannot be present in an amount that materially and adversely
affects the ability of the sodium and calcium bentonite clays to absorb liquid
dross products.” Id. at 7:41–44.
b. Pattengill (Ex. 1008)
Pattengill discloses a clumpable animal litter mixture having about 5
to 50 weight percent bentonite, about 0.1 to 25 weight percent gum-
containing clumping agent, and balance filler particulate. Ex. 1008,
Abstract. Upon contact with urine, the mixture agglomerates such that the
clump of agglomerated bentonite, gum-containing clumping agent, filler
particulate, and urine is capable of removal with a perforated scoop after as
little as one minute of formation. Id. at 2:41–44. Pattengill tests a number
of mixtures to determine the clumpability of different mixtures with
different constituents.
Pattengill’s Table 1 provides that Sample 11 has the brand name
“Tidy Cat w/baking soda,” the description “Natural Granules with odor
fighting bi-sulfite complex and baking soda” and “Major components (wt
%)” identified as “NA.” Id. at 3:26–64. The footnotes to Table 1 indicate
that the description is “[a]s noted on the bag containing the commercial litter
products,” and that “NA” means “Not Available.” Id. at 3:61–62.
Pattengill’s Table 8 provides the following:
- Sample 29 has the brand name “Tidy Cat with Baking Soda” and the
description “Clay & Baking Soda.”
- Sample 33 has the brand name “Scoop Fresh” and the description
“Clumping Litter (Bentonite).”
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- Sample 32 has the brand name “Stabilizer” and the description “>75%
Grade Plantago.”

Pattengill’s Table 11 provides the following information regarding
Mixture 11, where the values in parentheses ( ) correspond to the samples of
Table 8:
11: 49.4%(29)*, 19.8%(29)**, 29.6%(33)**, 1.2%(32)***.
Id. at 13:45–60. The asterisks following the table provide the following
information: *-8 + 16 M (-2.36 mm+ 1.18 mm); **-16 + 30 M (-1.18 mm+
0.60 mm); ***-200 M (-75 μm). Id.
ii. Analysis
Petitioner argues that claims 1–13, 30, and 32 are obvious over the
combination of Hughes and Pattengill. Pet. 52–60. Specifically, Petitioner
argues:
Challenged Claims 1–13, 30 & 32 of the ’019 Patent not
otherwise anticipated by [Hughes] or Pattengill, would have
been obvious to a person of ordinary skill in the art at the time
of the alleged invention of the ’019 Patent, under 35 U.S.C.
§ 103, in view of either [Hughes] or Pattengill, or in view of the
combination of the two references.

Id. at 52 (citing Ex. 1005 ¶ 136).
Regarding challenged claims 1, 30, and 32, Petitioner argues:
As discussed above, both [Hughes] and Pattengill (e.g., Mixture
11) Patents indisputably expressly disclose mixes of non-
swelling and swelling clay particles having mean particle sizes
below 4 mm and 2 mm, respectively -- and the average particle
size of the non-swelling clay material is greater than that of the
swelling clay. Even ignoring these clear anticipatory references,
Challenged Claims 1, 30 & 32 would have been obvious in view
of Hughes and Pattengill.
Id. at 52–53.
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Petitioner relies on paragraph 136 of the Hughes Declaration to
support its arguments regarding the combination of Hughes and Pattengill.
Paragraph 136 is reproduced below:
136. Thus, any of the Subject Claims of the ’019 Patent not
otherwise disclosed by [Hughes] or Pattengill individually, most
certainly, in my opinion, would have been obvious to a person of
ordinary skill in the art at the time of the alleged invention of the
’019 Patent in light of these references taken together.

Ex. 1005 ¶ 136. Petitioner does not identify, and we do not find in the
record, any other statements by Mr. Hughes regarding reasons why or how
one of ordinary skill in the art would have combined Hughes and Pattengill.
Patent Owner argues, first, that Petitioner fails to make out a prima
facie case that the challenged claims are unpatentable. PO Resp. 6.
Specifically, Patent Owner argues that the prior art cited by Petitioner does
not teach or suggest the MPS limitations. Id. In a similar vein, Patent
Owner argues that the cited prior art patents do not disclose, teach, or
suggest MPS (id. at 29–31) or the need to manipulate MPS (id. at 31–33).
Instead, according to Patent Owner, the cited prior art patents teach either to
equalize sodium bentonite (“NaB”) and calcium bentonite (“CaB”) particle
sizes, as in Hughes, or that particle size is not important, as in Pattengill. Id.
at 33–37.
a. Hughes
Petitioner argues that a “simple calculation of the average, mean
particle size, of the non-swelling clay disclosed in [Hughes] reflects a mean
of 1.975 mm (1975μ) (the average size in the range disclosed in Claims 4 &
16 [(600μ + 3350μ)/2]),” which meets and discloses the Claim 1 limitation
of “no greater than about 4 millimeters.” Pet. 16. In support of its method
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of calculating MPS, Petitioner states that persons of ordinary skill in the art
at the time of the invention, “which includes those with a basic
understanding of mathematics, understood that if only a range is known, the
‘mean’ particle size is determined by adding the largest and smallest sizes in
a range and dividing by two.” Id. at 16 n.9 (citing Ex. 1005 ¶ 24). With
respect to swelling clays, Petitioner argues that Hughes expressly discloses
“two particle size ranges of swelling clay (sodium bentonite), between: (i)
50μ and 3350μ; and (ii) 600μ and 3350μ; both of which plainly meet and
have an average, or mean, particle size which is ‘no greater than about 2
millimeters’ (1700μ or 1.7 mm, and 1975μ or 1.975 mm, respectively).” Id.
at 17.
Patent Owner responds that Hughes “discloses using the same size
particle ranges of sodium and calcium bentonite clays.” PO Resp. 9 (citing
Ex. 1006, 7:5–23). Patent Owner points to Hughes’s statement that “the
sodium and calcium bentonite clays in the litter box absorbent composition
have a particle size ranging from about 50u (microns) to about 3350u in
diameter, and preferably in a particle size ranging from about 600u to about
3350u in diameter . . . .” Id. (quoting Ex.1006, 7:5–11) (emphasis by Patent
Owner). Patent Owner further emphasizes Hughes’s statement that “the
sodium and calcium bentonite clays should be present in the composition in
particle sizes across substantially the entire range of about 600μ to about
3350μ.” Id. at 10 (quoting Ex. 1006, 7:19–26) (emphasis by Patent Owner).
Patent Owner argues that the “MPS cannot be calculated based upon the
upper and lower limits of the ranges, as there is simply insufficient
information to do so.” Id. (citing Ex. 2013 ¶¶ 5–7; Ex. 2015 ¶¶ 3–6).
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There is no disclosure of the MPS of sodium bentonite clay or of
calcium bentonite clay in Hughes. Although the clays described in Hughes
may have a mean particle size, it is neither disclosed, nor readily
ascertainable, based on the information given in Hughes. Petitioner’s
hypothetical MPS calculations are extrapolated from the highest and lowest
values of ranges given by Hughes. Pet. 16–17. In the Petition, Petitioner’s
calculations are theoretical; no experiments or further measurements support
Petitioner’s assertion that the Hughes’s clays have any specific MPS values,
or that those values, even if they were calculated or calculable, meet the
MPS limitations of claim 1. Under our construction of the term “mean
particle size,” which neither party disputes, the average of a representative
sample of particle sizes or groupings of particle sizes is needed to determine
the mean particle size. Petitioner has not established that a simple average
of the highest and lowest values represents a mean particle size when the
particle size distribution is unknown, and may be non-uniform.
Although we note Petitioner’s argument that “it is well-known that
groupings of particle sizes correspond to a bell curve” (Reply 8), this does
not mean that all particle size distributions are uniform. Patent Owner’s
experts opine that MPS “cannot be calculated based upon the upper and
lower limits of the ranges, as there is simply insufficient information to do
so.” PO Resp. 10 (citing Ex. 2013 ¶¶ 5–7; Ex. 2015 ¶¶ 3–6). As noted by
Patent Owner, Petitioner’s own declarant, Mr. Greene, testified that not all
clay particle size distributions form normal distribution curves. Paper 24, 2–
3. Even if we were to accept that the upper and lower limits of the ranges in
Hughes disclose groupings or bins of particle sizes (Reply 9), we have
insufficient information before us about the distribution of particles between
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those two bin sizes. See Ex. 2001, 3 (indicating that at least Mesh (U.S.
standard sieve sizes) 10, 12, 16, 20, 30, 40, 50, 60, 80, 100, 150, 200, 270,
and 325 may be plotted). If 3350μ and 50μ correspond to Mesh 6 and 270,
and if 3350μ and 600μ correspond to Mesh 6 and 30 (Reply 10), there are
still a number of other groupings or bin sizes in between those two about
which we know nothing. We are unpersuaded by Petitioner’s assertion that
“[t]wo bins are plainly representative.” Reply 9. The distribution of the
particles in Hughes may or may not be represented by a perfect bell curve,
but without additional information before us to support Petitioner’s position,
we are unpersuaded.
The parties also dispute the meaning of the “bridges” passage in
Hughes:
To achieve the fullest advantage of the present invention, the
sodium and calcium bentonite clays should be present in the
composition in particle sizes across substantially the entire range
of about 600μ to about 3350μ because the smaller diameter
water-swellable bentonite particles, upon being wetted, swell and
serve as ‘bridges’ between larger, wetted bentonite particles.

Ex. 1006, 7:19–26.
Petitioner uses this statement to argue that Hughes “explains the
benefit of and preference for smaller sizes of sodium bentonite particles.”
Pet. 17. Patent Owner argues that Hughes is, “in each instance, referencing
‘swelled’ bentonite,” i.e. sodium bentonite, and that “Petitioner has
conceded” that “swellable bentonite” refers to sodium bentonite, while “non-
swelling bentonite” refers to calcium bentonite. PO Resp. 12, 12 n.2.
According to Patent Owner, the passage means “that smaller, NaB particles
serve as bridges between larger NaB particles, and says nothing about
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relative NaB and CaB particle sizes.” Id. at 13. Petitioner replies that this
passage “render[s] it obvious to a [person of ordinary skill in the art] that
Hughes teaches using smaller average size swelling particles to bridge with
larger average non-swelling clay particles.” Reply 5; see also Tr. 27:17–19.
We agree with Patent Owner that the Hughes passage says nothing
about relative NaB and CaB particle sizes. We do not find support for
Petitioner’s assertions based on this passage. Hughes does not appear to
distinguish between NaB and CaB when it comes to wettability and
swellability, but does appear to treat both NaB and CaB as wettable and
swellable clays. Importantly, Hughes provides that “[t]he water-swellable
bentonite clays contain various exchangeable cations, including sodium,
potassium, lithium, ammonium, calcium and magnesium.” Ex. 1006, 6:43–
45 (emphasis added). Again not distinguishing between calcium bentonite
and sodium bentonite, Hughes states that “the combination of bentonite
clays” of the invention “are capable of absorbing several times their weight
in liquid dross material.” Id. at 4:47–52. Elsewhere, Hughes provides that
“urine is absorbed by the sodium and calcium bentonite clays.” Id. at 5:28–
29. In the same vein, Hughes states that “[d]iscrete particles of the
combination of bentonite clays effectively absorb animal dross and
simultaneously agglomerate into a sufficiently large and stable mass,” and
“[t]he combination of sodium and calcium bentonite clays of the present
invention absorb several times their own weight of an aqueous fluid.” Id. at
1:18–21, 5:8–10 (emphasis added).
We understand that some confusion arises because the ’019 patent
characterizes calcium bentonite as a “non-swelling” clay that only expands
“so that a fully hydrated clay particle occupies less than about 150 percent of
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the volume that the particle occupied in an anhydrous state.” Ex. 1001,
3:59–62. The ’019 patent, conversely, characterizes sodium bentonite as a
“swelling clay” that is “typically capable of expanding more than 500
percent during hydration.” Id. at 4:42–43. Hughes, however, does not make
the same distinction. We recognize that Mr. Hughes briefly presented
testimony on the bridges statement (Ex. 1005 ¶¶ 64, 72), but this testimony
is not sufficiently detailed to support Petitioner’s position.
In this context, the disputed Hughes passage does not distinguish
between NaB and CaB, as Petitioner urges. Without an explicit statement
that the passage is referring to one or the other of sodium bentonite or
calcium bentonite, Hughes does not express a clear preference for a smaller
diameter sodium bentonite particle. In view of this interpretation, together
with the statement in Hughes that “the sodium and calcium bentonite clays
should be present in the composition in particle sizes across substantially the
entire range of about 600μ to about 3350μ,” (Ex. 1006, 7:19–26), we are not
persuaded by Petitioner’s contention that Hughes teaches using NaB with a
smaller mean particle size than the mean particle size of CaB.
b. Pattengill
Petitioner argues that “Pattengill expressly discloses litter Mixture No.
11 comprised of separate particles of non-swelling and swelling clays in
Table 11, where the non-swelling clay particles have sizes between 0.6 mm
and 2.36 mm.” Pet. 39. Petitioner represents that Table 8 identifies
“ingredient #29, Tidy Cat with Baking Soda (non-swelling clay with a small
amount of baking soda).” Id. at 39 n.15. With respect to swelling clays,
Petitioner argues that “Mixture 11 in Pattengill expressly teaches employing
swelling clay (Scoop Fresh, sodium bentonite; Sample No. 33) with particle
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sizes in the range of 0.6 mm to 1.18 mm – which are plainly below the
claimed ‘no greater than about 2 mm.’” Id. at 41. Regarding MPS,
Petitioner averages the upper and lower bounds of the disclosed non-
swelling and swelling clay particle size ranges of Pattengill to conclude that
“a simple calculation of the average, mean, particle size of the non-swelling
clay particles of Mixture No. 11 yields a mean particle size of 1.52 mm. See
Ex. 1005 ¶ 108. And, the mean particle size of the swelling clay is 0.89 mm.
Ex. 1005 ¶ 108.” Id. at 42 (footnote omitted). Petitioner notes that “[w]ith a
given range of 0.60 to 1.18 mm, the mean particle size is calculated as
follows: [(0.60 mm + 1.18 mm)/2] = 0.89 mm.” Id. at 42 n.17.
Patent Owner argues that Pattengill does not “disclose or discuss the
significance or desirability of MPS or the MPS Limitations.” PO Resp. 14.
We agree that there is no disclosure of the MPS of sodium bentonite clay or
of calcium bentonite clay in Pattengill. Although the clays of Pattengill may
have a mean particle size, it is neither disclosed, nor readily ascertainable,
based on the information given in Pattengill. Petitioner’s hypothetical MPS
calculations are extrapolated from the highest and lowest values of ranges
given by Pattengill. Pet. 38–43. In the Petition, Petitioner’s calculations are
theoretical; no experiments or further measurements support Petitioner’s
assertion that Pattengill’s clays have any specific MPS values, or that those
values, even if they were calculated or calculable, meet the MPS limitations
of claim 1. Under our construction of the term “mean particle size,” which
neither party disputes, the average of a representative sample of particle
sizes or groupings of particle sizes is needed to determine the mean particle
size. Petitioner has not established that a simple average of the highest and
lowest values represents a mean particle size when the particle size
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distribution is unknown, and may be non-uniform. See supra Section
II.B.ii.a. 11–12.
Patent Owner also argues that Pattengill “fails to disclose the content
of the commercial litters in Mixture 11 relied upon by Petitioner, and such
information was not generally available or known to a [person of ordinary
skill in the art].” PO Resp. 14 (citing Ex. 2013 ¶10). Patent Owner
elaborates that the ingredients in Scoop Fresh and Tidy Cat with Baking
Soda, the two litters combined in Mixture 11, were not available on the
product packaging and not otherwise readily available to the public or
persons of ordinary skill in the art. Id. at 27 (citing Ex. 2013 ¶ 10). Patent
Owner challenges Mr. Hughes’s recollection based on personal familiarity
with the purported composition of these two litters, arguing that this
information would not have been generally known to one of ordinary skill in
the art. Id. at 27–28.
Petitioner responds that the disclosure of Pattengill could not be more
detailed, referring to Table 11, which summarizes Mixture 11. Reply 14.
Petitioner argues that Pattengill “expressly distinguishes between samples of
swelling and non-swelling clay by using the terms ‘Clay’ vs. ‘Clumping
Litter.’” Id. (citing Ex. 1016 ¶ 30).
Petitioner’s arguments, however, do not account for the lack of
evidence regarding what constitutes Tidy Cat with Baking Soda, or what
constitutes Scoop Fresh. Petitioner takes the position that Tidy Cat with
Baking Soda, which is identified by Pattengill as “Clay & Baking Soda,” is
“non-swelling clay.” Pet. 39. Similarly, Petitioner takes the position that
Scoop Fresh, which is identified by Pattengill as “Clumping Litter
(Bentonite),” is “swelling clay.” Id. Pattengill itself does not go into detail
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regarding what is meant by “clay” vs. “clumping litter.” We are left with
Petitioner’s expert opinions on the matter.
Mr. Hughes relies on his personal familiarity with the products in
question to opine on their content. Regarding Tidy Cat with Baking Soda,
he states that he is “personally familiar” with the product based on
“competitive testing conducted during my tenure at and by American
Colloid Company,” concluding that it “was almost entirely a non-swelling
clay product.” Ex. 1005 ¶ 96. Regarding Scoop Fresh, he states that “I am
very familiar with this product” and that it is “clear” that “the ‘bentonite’
identified in Pattengill is sodium bentonite – a swelling clay.” Id. ¶ 99.
Mr. Hughes, however, provides no facts or data on which he bases his
opinions or recollections regarding the composition of “Tidy Cat with
Baking Soda” or “Scoop Fresh.” Without more, we cannot give much
weight to Mr. Hughes’s statements regarding the content of the
compositions, particularly when his statements pertain to a physical
composition that could be tested to determine its content, or about which
specific information could be obtained. We find that Mr. Hughes’s opinions
are not persuasive as they are not supported by the evidence of record. See
37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying
facts or data on which the opinion is based is entitled to little or no
weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert
opinion “may render the testimony of little probative value in [a
patentability] determination”).
Mr. Greene’s testimony regarding the composition of these products is
similarly unsupported. He states that he is “personally familiar with” the
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Tidy Cat with Baking Soda product, which a person of ordinary skill in the
art would have understood “comprises non-swelling clay.” Ex. 1016 ¶ 30.
He also states that “[t]he ingredients listed on the package stated that it was
‘ground clay,’ which someone skilled in the art at the time would likely
conclude was non-swelling clay such as Fuller’s Earth or calcium bentonite,
which they could easily confirm.” Id. He details methods of determining
types of clay that one of ordinary skill in the art could use, such as free swell
tests and rudimentary microscopic analysis, but does not go on to confirm
the composition of Tidy Cat with Baking Soda. Id. at ¶¶ 30–32. He also
states that he is “personally familiar with” the Scoop Fresh product, and
Pattengill “clearly identifies Scoop Fresh as sodium bentonite (‘Clumping
Litter (Bentonite)’). Id. at 33. He testifies further that one of ordinary skill
in the art could have performed tests to determine the composition of Scoop
Fresh, but there is no indication that any such tests were performed. Id.
Because Mr. Greene’s testimony on this matter does not disclose the
underlying facts or data on which the opinion is based, we are not inclined to
give it much weight. 37 C.F.R. 42.65(a).
Finally, Petitioner argues in its Reply that the challenged claims are
obvious in view of Pattengill. Reply 13–16. The Decision on Institution,
however, specified that we instituted inter partes review only on the ground
of whether claims 1–13, 30, and 32 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Hughes and Pattengill, and “no
other ground set forth in the Petition as to any challenged claim is
authorized.” Dec. 15. The ground of obviousness based on Pattengill alone
was presented in the Petition, but we did not institute inter partes review on
that ground. Thus, to the extent that Petitioner’s arguments are directed to
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obviousness in view of Pattengill alone, they are not properly part of this
proceeding. Even if we were to consider Pattengill alone, we find that
Pattengill does not render the challenged claims obvious, for the reasons
discussed above.
c. Reasons to Combine Hughes and Pattengill
Patent Owner also disputes that Petitioner met its burden of showing
obviousness by a preponderance of the evidence. PO Resp. 18. Patent
Owner argues that Petitioner and Mr. Hughes do not provide any reason why
a person of ordinary skill in the art would have understood the MPS
limitations to have been obvious, or to be a result-effective variable. Id. at
20. Patent Owner also argues that “Petitioner and Mr. Hughes never state
how or why the combination of [Hughes] and Pattengill discloses MPS or
the MPS limitations.” Id. at 21.
In the Reply, regarding the combination of the references, Petitioner
argues that “Hughes and Pattengill are directed to the exact same thing –
clumping litters comprised of swelling and non-swelling clay.” Reply 3.
Petitioner also argues that overlapping particle sizes also establishes
obviousness. Reply 19 (citing In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003)).
The key to supporting a conclusion of unpatentability under 35 U.S.C.
§ 103(a) is the clear articulation of reasons why the claimed invention would
have been obvious. The Supreme Court has clarified this requirement that
must be met to establish a prima facie case of obviousness, emphasizing that
the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Although the reasoning may draw from numerous
intrinsic and extrinsic sources, conclusions of obviousness “cannot be
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sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
We have already determined that the limitations of the challenged
claims are not present in the prior art. See supra. Petitioner’s presentation
of its case regarding reasons to combine Hughes and Pattengill, summarized
substantially in its totality above, is not extensive. Id.
Although the references may have interrelated teachings, as Petitioner
asserts in its Reply, Petitioner has not explained persuasively how or why a
person of ordinary skill in the art would have combined the features of
Hughes with those of Pattengill. Petitioner’s assertion that the prior art
references are from the same field provides insufficient analysis concerning
why and how a person of ordinary skill in the art would have modified or
combined the prior art in the manner asserted, and does not articulate the
required “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine elements in the way the
claimed new invention does.”).
Petitioner’s assertion that overlapping particle sizes also establishes
obviousness is unsupported by analysis sufficient to support a successful
argument. Reply 19. Even if we were satisfied that Petitioner had presented
this argument in a timely manner in the Petition, rather than for the first time
in its Reply, and even if we were satisfied that Petitioner had shown that the
compositions and distributions of Hughes and Pattengill are sufficiently
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definite to establish that the ranges of those reference overlap with those of
the ’019 compositions, Petitioner’s brief argument on this topic fails to
establish that the allegedly overlapping ranges of Hughes, Pattengill, and the
’019 patent render the challenged claims obvious. Id. at 20.
d. Dependent Claims
Claims 2–13 each depend directly or indirectly from claim 1.
Petitioner contends these claims are also unpatentable under 35 U.S.C. § 103
based on Hughes and Pattengill. Pet. 54–60. The dependent claims add
limitations directed to the type of clays (claims 2 and 3), the ratios of MPS
of the non-swelling clay to the swelling clay (claims 4 and 5), the percent
weight of the non-swelling clay and swelling clay (claims 6, 7, 9, and 10),
the particle size of the non-swelling clay and swelling clay (claims 8, 11, and
12), and the addition of an organic clumping agent (claim 13). All of these
claims nevertheless also require the mean particle size limitations of claim 1,
which we have determined are not met by the combination of Hughes and
Pattengill. We determine, therefore, that the supporting evidence fails to
demonstrate, by a preponderance of the evidence, that dependent claims 2–
13 would have been obvious over the combination of Hughes and Pattengill.
Independent Claim 30, which is directed to a method for making a
clumping animal litter, also requires that the mean particle size of the non-
swelling clay material is greater than the mean particle size of the swelling
clay. For largely the same reasons stated above, Hughes does not disclose
that the mean particle size of the non-swelling clay material is greater than
the mean particle size of the swelling clay, as is required by claim 30, and
claim 32 that depends therefrom.
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After considering the parties’ arguments and the supporting evidence
of record, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1–13, 30, and 32 are unpatentable as obvious over
the combination of Hughes and Pattengill.
C. State of the Record
In its Patent Owner Response, Patent Owner notes that “[d]espite the
Board’s finding that neither [Hughes nor Pattengill] discloses MPS, and
despite Patent Owner’s request for rehearing, Petitioner did not file a motion
to submit supplemental information in accordance with 37 C.F.R. § 42.123
within one month of the date the trial was instituted.” PO Resp. 23. Patent
Owner argues that, consequently, Petitioner is “limited by the record filed
with the Petition.” Id. After Petitioner filed its Reply, in which Petitioner
does not appear to address this argument, we granted Patent Owner
authorization to file a three-page Sur-Reply to address Patent Owner’s
contention that Petitioner presented arguments and evidence in the Reply
that are not contained in the Petition. Specifically, Patent Owner contends
that the arguments and evidence presented in the Reply are not contained in
the Petition, and argues that Hughes teaches away from combination with
Pattengill. Sur-Reply 1–3.
Rule 42.22(a)(2) provides that a petition must include “[a] full
statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence including material facts, and
the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). Rule
43.23(b) provides that “[a] reply may only respond to arguments raised in
the corresponding . . . patent owner response.” Id. § 42.23(b). The Board’s
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Trial Practice Guide also addresses the purpose and proper content of
replies:
While replies can help crystallize issues for decision, a reply that
raises a new issue or belatedly presents evidence will not be
considered and may be returned. The Board will not attempt to
sort proper from improper portions of the reply. Examples of
indications that a new issue has been raised in a reply include
new evidence necessary to make out a prima facie case for the
patentability or unpatentability of an original or proposed
substitute claim, and new evidence that could have been
presented in a prior filing.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
2012).
It is of the utmost importance that petitioners in IPR proceedings
adhere to the requirement that the initial petition identify “with particularity”
the “evidence that supports the grounds for the challenge to each claim.” 35
U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must
be made in the motion.” 37 C.F.R. § 42.23(b). As stated by the Federal
Circuit: “Once the Board identifies new issues presented for the first time in
reply, neither this court nor the Board must parse the reply brief to determine
which, if any, parts of that brief are responsive and which are improper.”
Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015–1693,
2016 WL 2620512, at *8 (Fed. Cir. May 9, 2016).
The Petition was supported solely by the Hughes Declaration. As
noted above, Mr. Hughes’s declaration included only one short paragraph
regarding the combination of the references. Ex. 1005 ¶ 136. Neither the
Petition nor the Hughes Declaration provides further analysis regarding
whether the claimed mean particle size values are obvious from the
combination of Hughes and Pattengill. The Greene Declaration, conversely,
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goes into more detail regarding combining the Hughes and Pattengill
references. See, e.g., Ex. 1016 ¶¶ 39, 41–42, 44; Tr. 45:7–9. Patent Owner,
in its deposition of Mr. Greene, elected not to cross-examine him on the
issue of reasons to combine the Hughes and Pattengill references.
Tr. 45:13–24. Patent Owner’s position is that the burden of proof that there
should have been a combination is on Petitioner. Tr. 46:11–12.
In our view, Petitioner’s arguments do more than merely address
Patent Owner’s argument that Petitioner did not establish that the
combination of Hughes and Pattengill renders the challenged claims
obvious. Rather, Petitioner attempts to provide new arguments and evidence
that were not set forth clearly in the Petition as to why the combination of
Hughes and Pattengill renders the challenged claims obvious. Because
Petitioner waited until the Reply to make these arguments and serve this
evidence on Patent Owner, Patent Owner was unable to respond fully to
Petitioner’s arguments. The Sur-Reply allowed Patent Owner a brief
opportunity to present responsive arguments, but not to serve responsive
evidence. Thus, consideration by the Board of the arguments in the Reply
and evidence presented in the Greene Declaration in support thereof would
be unfair to Patent Owner. Petitioner could have presented this argument
and evidence with the Petition, and has not contended or offered any
evidence to show otherwise.
Because Petitioner belatedly presented these new arguments and
evidence to make its case that the combination of Hughes and Pattengill
would have been obvious, we decline to consider the portions of the Reply
and the Greene Declaration on this issue. See Office Trial Practice Guide,
77 Fed. Reg. at 48,767. Although Patent Owner did file observations
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regarding the cross-examination of Mr. Greene, such observations are not
designed for submitting substantive arguments. See id. at 48,768 (“An
observation (or response) is not an opportunity to raise new issues, re-argue
issues, or pursue objections.”). Considering the new arguments and
evidence at this late stage would not serve the interests of justice. We have,
however, reviewed and considered the arguments in the Petition and
evidence therein. We agree with Patent Owner that Petitioner has not
provided adequate explanation or evidence to support its contention that one
of ordinary skill in the art at the time of the invention would have combined
Hughes and Pattengill.
D. Hughes Testimony
Patent Owner argues that Mr. Hughes’s testimony should be given no
weight, as he provides his own opinion rather than what would have been
understood by a person of ordinary skill in the art at the time of the
invention. PO Resp. 24. Petitioner counters that Mr. Hughes may opine as
to what was understood by a person of ordinary skill in the art, even if he has
a high skill set. Reply 21.
Petitioner argues in the Petition that the person of ordinary skill in the
art at the time of the invention of the ’019 patent “is apparent from the cited
art, and includes a person with an undergraduate scientific or engineering
degree in a relevant field (such as chemistry, materials, and/or mechanical or
process engineering) and/or approximately three years of relevant industry
or academic experience.” Pet. 7 (citing Ex. 1005 ¶ 22). Patent Owner
agrees with this definition. PO Resp. 24 (citing Ex. 2013 ¶ 3).
In light of the evidence before us, we find, as suggested by Petitioner
and agreed to by Patent Owner, that the references themselves represent the
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level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is
evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and
Interferences did not err in concluding that the level of ordinary skill in the
art was best determined by the references of record). Moreover, because the
specific level of skill suggested by Petitioner was agreed to by Patent
Owner, and because it is open-ended in its use of the term “includes,” we
agree that the level of ordinary skill in the art “includes a person with an
undergraduate scientific or engineering degree in a relevant field (such as
chemistry, materials, and/or mechanical or process engineering) and/or
approximately three years of relevant industry or academic experience.”
Regarding the testimony of Mr. Hughes, we can accord appropriate
weight to an expert’s testimony, taking into account the expert’s
understanding of the level of skill in the art at the time of the invention. See,
e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
Board has discretion to give more weight to one item of evidence over
another “unless no reasonable trier of fact could have done so”); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”). We are not persuaded that Mr. Hughes’s testimony should
be given no weight for allegedly failing to apply the proper level of skill in
the art. We accord the appropriate weight to Mr. Hughes’s testimony as
indicated in this Decision and for the reasons articulated in this Decision.

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E. Patent Owner’s Motion to Exclude Evidence
Patent Owner moves to exclude the Greene Declaration (Ex. 1016)
because it allegedly contains new evidence and new arguments. Paper 25, 1.
We have generally addressed Patent Owner’s arguments above, in the
discussion regarding our treatment of the evidence and arguments presented
in Petitioner’s Reply. In view of this discussion, and because we did not
rely on the Greene Declaration in reaching our Decision here, we dismiss
Patent Owner’s Motion to Exclude the Greene Declaration as moot.
III. CONCLUSION
After considering the Petition, Patent Owner Response, Reply, Sur-
Reply, and the evidence of record relied on by Petitioner and Patent Owner,
we are not persuaded that Petitioner has shown by a preponderance of the
evidence that claims 1–13, 30, and 32 of the ’019 patent would have been
obvious over the combined teachings of Hughes and Pattengill.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1–13, 30, and 32 of the ’019 patent are unpatentable;
and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

David Roodman
daroodman@bryancave.com

Emma Harty
Emma.harty@bryancave.com

For PATENT OWNER:

Michael Mazza
mazza@mazzallc.com

Arnold Turk
aturk@gbpatent.com