Trials@uspto.

gov
571-272-7822

Paper 12
Entered: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
Petitioners,
v.
KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
Patent Owners.
____________
Case IPR2015-01453
Patent D631,670 S
____________
Before SCOTT A. DANIELS, KRISTINA M. KALAN, and
JAMES A. WORTH, Administrative Patent Judges.
DANIELS, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108

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I.

INTRODUCTION

Petitioners, Johns Manville Corporation and Johns Manville, Inc.,

filed a Petition to institute an inter partes review of the sole claim of U.S.
Patent No. D631,670 S (Ex. 1001, the 670 patent). Paper 1 (Pet.).
Patent Owners, Knauf Insulation, Inc. (the assignee of record) and Knauf
Insulation SPRL, filed a Preliminary Response. Paper 10 (Prelim. Resp.).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. 314 and 37 C.F.R. 42.4(a). Upon consideration
of the Petition, we determine that Petitioners have established a reasonable
likelihood of prevailing on the claim challenged in the Petition. For the
reasons expressed below, we institute an inter partes review of the sole
claim of the 670 patent.
A. Related Proceedings
Petitioners state that the 670 patent has been asserted against them by
Patent Owners in the U.S. District Court for the Southern District of Indiana,
in Knauf Insulation, LLC v. Johns Manville Corporation, 1:15-cv-00111WTL-MJD. Pet. 1.
B. The 670 Patent and Claim
The 670 patent (Ex. 1001), titled Insulation Material, relates to a
design for mineral fiber insulation, for example glass mineral wool
insulation, used in commercial and residential construction applications.
Ex. 1001, 1; Prelim. Resp. 12. The sole drawing illustrating [t]he
ornamental design for insulation material, as recited in the 670 patent
claim, is reproduced below as a black and white photocopy reproduction on
the left, and as a color image, on the right.

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This figure, on the left, is the

claimed design as it appears on the
front page of the 670 patent as a
photocopy of the color photograph
filed during prosecution. Ex. 1001,
1.

This figure, on the right, is an image of

the actual color photograph depicting
the claimed design, as filed during
prosecution of the 670 patent.1 Ex.
1002, (Reply to Off. Act. Aug. 6,
2010, 4).

C. The Alleged Grounds of Unpatentability

Petitioners contend that the challenged claim is unpatentable on the
following specific grounds:

The color photograph was accepted by the Examiner pursuant to a Petition

under 37 C.F.R. 1.84(a)(2). See Ex. 1002, 1011 (Notice of Allowability,
mailed Dec. 10, 2010, 12). The color photograph is part of the prosecution
history of the 670 patent and may be accessed via the USPTOs Patent
Application Information Retrieval (PAIR) system. See Ex. 1001,
Description.

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References
Owens Corning PROPINK Smartperm Vapor
Retarder2
Johns Manville SG Series Spin-Glas & Range
Spin Glas Brochure3 in view of OC PROPINK,
Johns Manville Microlite AA Blankets
Brochure4 (JM Microlite), and the Knauf
Crown Floor Slab reference5 (Knauf Crown
Floor Slab).
Soundproofing Your Walls, The Family
Handyman Magazine6 in view of OC PROPINK,
JM Microlite, and Knauf Crown Floor Slab.
Knauf: Timber Frame External Walls: NonResidential Brochure7 in view of OC PROPINK,
JM Microlite, and Knauf Crown Floor Slab.
Owens Corning 2006 At A Glance Report8 in
view of OC PROPINK, JM Microlite, and
Knauf Crown Floor Slab.
Owens Corning 2007 Progress Report9 in view of
OC PROPINK, JM Microlite, and Knauf Crown
Floor Slab.
Johns Manville SG Series Spin-Glas & Range
Spin Glas Brochure in view of JM Microlite.
Soundproofing Your Walls, The Family
2

Basis
102
102
103

102
103
102
103
102
103
102
103
102
103
102

Ex. 1003, Owens Corning, PROPINK Smartperm Vapor Retarder (2004)

(OC PROPINK).
3
Ex. 1004, Johns Manville, SG Series Spin-Glas & Range Spin Glas
(1997) (JM Spin Glas).
4
Ex, 1005, Johns Manville, Microlite AA Blankets, (2002) (JM
Microlite).
5
Ex. 1006 Knauf, Crown Floor Slab, (2006) (Knauf Crown Floor Slab).
6
Ex. 1007, Wentz, Family Handyman, Soundproofing Your Walls, (1998)
(Soundproofing).
7
Ex. 1008 Knauf: Timber Frame External Walls: Non-Residential, (2005)
(Knauf Timber Frame)
8
Ex. 1009, Owens Corning, At a Glance, (2006) (OC 2006 Report).
9
Ex. 1010, Owens Corning, Progress Report, (2007) (OC 2007 Report).

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References
Handyman Magazine in view of JM Microlite.
Knauf: Timber Frame External Walls: NonResidential Brochure in view of JM Microlite.

Basis
103
102
103

Petitioners support their challenges with the Declarations of Mr. Mark

A. Granger (Ex. 1014) (Granger Declaration), Ms. Teresa K. OBrien (Ex.
1015) (OBrien Declaration), Ms. Anne N. Barker (Ex. 1016) (Barker
Declaration), and Mr. Michael Fay (Ex. 1017) (Fay Declaration). Pet.
16, 24, 32, and Appendix List of Exhibits.
II.

CLAIM CONSTRUCTION

A. Legal Standard
In an inter partes review, [a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears. 37 C.F.R. 42.100(b). With respect to design
patents, it is well-settled that a design is represented better by an illustration
than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14
(1886)). Although preferably a design patent claim is not construed by
providing a detailed verbal description, it may be helpful to point out . . .
various features of the claimed design as they relate to the . . . prior art.
Egyptian Goddess, 543 F.3d at 67980; cf. High Point Design LLC v. Buyers
Direct, Inc., 730 F.3d 1301, 131415 (Fed. Cir. 2013) (remanding to district
court, in part, for a verbal description of the claimed design to evoke a
visual image consonant with that design)(citation omitted).
Petitioners argue that the claimed design includes certain elements,
namely insulation material, a cloud-like appearance, variations in a
swirl pattern, and a variation of distinct hues. Pet. 1519. For its part,

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Patent Owners do not provide a specific claim construction, but contend that
Petitioners verbal descriptions of individual elements of the design fail to
evoke a visual image consonant with the claimed design, and ignore color
as part of the ornamental design. Prelim. Resp. 4, 6.
The DESCRIPTION portion of the 670 patent identifies the single
view of the insulation material depicted in the Figure, and additionally states
that [t]he patent or application file contains at least one photograph
executed in color. Ex. 1001. It is helpful in our analysis, again, to
reproduce the color photograph of the claimed design for insulation material
below.

The figure above depicts the color version of the sole figure of the
670 patent.
There are two particular aspects of the color photograph which
Petitioners argue are not properly part of any claim construction. Pet. 14,
1618. First, even though Applicant for the 670 patent relied upon a color
photograph as the depiction of the claimed design for insulation material,
Petitioners assert that the Applicant never claimed a specific color. Pet. 14.
Specifically, where the Applicants recitation in the Petition for Color

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Photograph under 37 C.F.R. 1.84(b)(2) stated that color is an integral
part of the claimed design, Petitioners contend that the Applicant did not
identify any particular color or colors that are integral. Pet. 14, see also
Ex. 1002, 13 (Pet. for Color Photograph). Second, Petitioners assert that the
grid-like surface representations, or waffle pattern, in the photograph is
not properly considered part of the claimed ornamental design. Pet. 16
(citing Ex. 1012 21, 2324; Ex. 1012 610). To support these
arguments, Petitioners rely on two experts, Dr. Martin J. Bide, a textile and
color scientist at the University of Rhode Island, and Mr. Mark A. Granger,
a Research Manager for Johns Manville. Id. at 1617. Based on their
testimony, and on case law cited in the Petition, Petitioners contend that the
waffle pattern occurs due to a chain or mesh conveyor belt upon which the
fiberglass insulation rests during the drying/baking process and is not an
ornamental feature but simply evidence of the production process. Id. at
17.
In response to the issue of color, Patent Owners argue that the
prosecution history of the 670 patent, including the Petition Under 37
C.F.R. 1.84(b)(2), indicates that the Applicant clearly intended the colors
shown in the photograph to form part of the claimed design. . . . and [color]
cannot be ignored when determining the patentability of the claimed
design. Prelim. Resp. 1011. With respect to the waffle pattern, Patent
Owners argue that the Petition is inconsistent because it initially asserts that
the waffle pattern is not part of the design, but yet provides an analysis of
waffle pattern in the prior art. Prelim. Resp. 6 f.n. 1.
With respect to Petitioners second argument regarding the waffle
pattern, we do not agree with Petitioners analysis that a waffle pattern is

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not properly an ornamental aspect of the claimed design. The patent itself
expressly claims insulation material, as shown and described in the single
photograph accepted as the sole figure in the patent. See Ex. 1001, 1.
Observing the overall appearance of the design, the waffle pattern is
visually apparent, although not terribly distinct, in the color photograph.
The Applicant, in submitting a Petition Under 37 C.F.R. 1.84(b)(2) chose a
photograph as the most accurate way of representing their design to the
public, and did not disclaim any aspect of the design as shown and
described, including the waffle pattern. Ex. 1002, 1011. This
prosecution strategy limits the scope of the patent claim and includes the
visually apparent waffle pattern. See In re Mann, 861 F.2d 1581, 1582
(Fed.Cir.1988) (Design patents have almost no scope. The claim at bar, as
in all design cases, is limited to what is shown in the application
drawings.). Therefore, we interpret the claimed design as including, in
addition to other ornamental features, a waffle pattern as shown and
described by the sole figure.
We are similarly unpersuaded by Petitioners first argument that color
is not an element of the claimed design. Besides submitting a color
photograph, as opposed to a lined drawing, the Applicants Petition Under
37 C.F.R. 1.84(b)(2) expressly states that [a] color photograph is
necessary because color is an integral part of the claimed invention. The
Federal Circuit instructs us that color may play a role in the patentability of
a claimed design. In re Haruna, 249 F.3d 1327, 1336 (Fed. Cir. 2001)
(citing Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565
(Fed.Cir.1988); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1443
(Fed.Cir.1984)). Notably, as Petitioners point out, neither the Petition under

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37 C.F.R. 1.84(b)(2), nor the 670 patent itself, recite any particular color.
During prosecution of the application that became the 670 patent, the
Applicant differentiated the claimed design from the prior art stating that
the claimed invention includes a variation of distinct hues, such as brown
and cream. Applicant is not aware of any prior art that discloses a variation
of distinct hues throughout the insulation material. Ex. 1002, 20 (Reply to
Office Action 6, Sept. 24, 2010).
Observing the overall appearance of the claimed design in conjunction
with a reasonable reading of Applicants foregoing statement, we understand
essentially two things: first, that the Applicant is claiming a variation of
distinct hues and second, that a sufficient distinction in hue is, for example,
brown and cream. See id. Important to our interpretation, under the
broadest reasonable construction standard, is the fact that during prosecution
the Applicant never indicated that the colors, in the color photograph
submitted as the sole figure, are specifically brown and cream. We
decline to read general statements from the Applicants arguments during
prosecution, presented in the form of an example, into the patent claim. See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification or prosecution history when those sources expressly
disclaim the broader definition.) (citation omitted). We are persuaded that
color is an element of the claimed design; this element includes colors that
sufficiently impart or convey a variation of distinct hues, but is not limited to
brown and cream.
Petitioners assert that other elements of the claimed design should also
determine the verbal claim construction. Pet. 1519. Petitioners argue that

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the 670 patent itself, as well as the prosecution history, identify and explain
the claimed design is for insulation material. Id. at 15. Also, Petitioners
contend that the Examiner, during prosecution, characterized the insulation
material as having a cloud like appearance and variations in a swirl
pattern, descriptions to which the Applicant did not object. Id. at 16.
Patent Owners disagree with these interpretations and argue that
Petitioners verbal construction improperly emphasizes individual elements
of the design and should instead focus on the design as a whole. Prelim.
Resp. 5. Patent Owners do not, however, substantively contest Petitioners
claim constructions for these elements of the claimed design, or explain
adequately why [i]nsulation material, cloud-like appearance, and
variations in a swirl pattern, do not adequately describe the overall
appearance of the claimed design. See id. at 57. We are persuaded on this
record that these descriptions aptly characterize elements that are discernable
throughout the entirety of the photograph that is the sole claim of the 670
patent.
Additionally, in contesting Petitioners claim construction, Patent
Owners cite to Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314,
1330 (Fed. Cir. 2012) for the purported holding that [the] district courts
description was incorrect because a side-by-side comparison of the two
designs shows substantial differences in overall visual appearance between
the patented design and the Fidler reference. Prelim. Resp. 7. We are not
persuaded that this holding in Apple, as it relates to a visual comparison of
the asserted Fidler prior art reference with the claimed design for purposes
of determining a Rosen reference, is inconsistent with claim construction in

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the present proceeding.10 Id. Accordingly, we are persuaded, on this record,
that insulation material, cloud-like appearance, and variations in a swirl
pattern, are fitting descriptions of the overall appearance of the claimed
design.
Because the claimed design consists of only a single 2-dimensional
figure, shown simply in a planar view (although the 670 patent describes
the view as a front perspective view), and without any environmental or
explanatory context, we find it helpful, as discussed above, to describe
verbally these additional elements of the claim for purposes of comparison
with the prior art. See Egyptian Goddess, 543 F.3d at 680 (While it may be
unwise to attempt a full description of the claimed design, a court may find it
helpful to point out . . . various features of the claimed design as they relate
to the accused design and the prior art.); see also High Point Design, 730
F.3d at 1314 (holding that a district court erred by failing to translate the
design into a verbal description for purposes of a non-obviousness analysis).
Therefore, in addition to the waffle pattern and color discussed above, the
single embodiment of the claimed design also depicts insulation material
having a cloud-like appearance with variations in a swirl pattern.
10

As a starting point for a 103 rejection for designs, there must be a

reference, a something in existence, the design characteristics of which are
basically the same as the claimed design in order to support a holding of
obviousness. Such a reference is necessary whether the holding is based on
the basic reference alone or on the basic reference in view of modifications
suggested by secondary references. In re Rosen, 673 F.2d at 391; see also
Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)
(stating the first step in an obviousness analysis for a design patent requires
a search of the prior art for a primary reference). A Rosen reference
refers to such a starting point.

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III. ANALYSIS
A. Principles of Law
1. Anticipation
Notably for design patents, the ordinary observer test for
anticipation is the same test used for infringement. See Intl Seaway Trading
Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying
Egyptian Goddess holding to the test for anticipation). It is important, also,
to keep in mind for designs that the ordinary observer is not the same as a
person of ordinary skill in the art. The ordinary observer is quite often a
consumer, or purchaser, considering a product in the ordinary course of
business. See Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,
162 F.3d 1113, 1117 (Fed. Cir. 1998) ([T]he focus is on the actual product
that is presented for purchase, and the ordinary purchaser of that product.)
In Egyptian Goddess, the Federal Circuit explained that the ordinary
observer is also a person familiar with the prior art designs. Egyptian
Goddess 543 F.3d at 67578. For purposes of determining anticipation, it is
necessary to compare all the ornamental features of the claimed design to the
prior art under the ordinary observer standard. Intl Seaway, 589 F.3d at
1243 ([T]he ordinary observer test requires consideration of the design as a
whole.) (citation omitted). For purposes of comparison the question is
whether the claimed design and the prior art are substantially the same: The
mandated overall comparison is a comparison taking into account significant
differences between the two designs . . . . minor differences cannot prevent a
finding of anticipation. Id., see also Crocs, Inc. v. Intl Trade Commn, 598
F.3d 1294, 1303 (Fed. Cir. 2010).

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2. Obviousness
In a challenge to a design patent based on obviousness under
35 U.S.C. 103, the ultimate inquiry is whether the claimed design would
have been obvious to a designer of ordinary skill who designs articles of the
type involved. Apple, Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314,
1329 (Fed. Cir. 2012) (citing Titan Tire Corp. v. Case New Holland, Inc.,
566 F.3d 1372, 1375 (Fed. Cir. 2009) quoting Durling v. Spectrum Furniture
Co., 101 F.3d 100, 103 (Fed. Cir. 1996)). Here, Petitioners assert that the
relevant designer of ordinary skill is someone with a background and
training in color and color management . . . . and could be a professional in
one of several different industries: a graphic designer, a person involved in
the measurement of color in textiles, a color consultant, a color measurement
instrument professional, or a person involved in paint pigmentation. Pet.
2223 (citing Ex. 1012 13).
This obviousness inquiry consists of two steps. Apple, 678 F.3d at
1329. In the first step, a primary reference (sometimes referred to as a
Rosen reference as discussed above at note 10) must be found, the design
characteristics of which are basically the same as the claimed design. Id.
(citing Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir.
1996) quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). This first step
is itself a two-part inquiry under which a court must both (1) discern the
correct visual impression created by the patented design as a whole; and (2)
determine whether there is a single reference that creates basically the
same visual impression. High Point Design, 730 F.3d at 1312 (quoting
Durling, 101 F.3d at 103).

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In the second step, the primary reference may be modified by
secondary references to create a design that has the same overall visual
appearance as the claimed design. Id. at 1311. However, the secondary
references may only be used to modify the primary reference if they are so
related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.
Durling, 101 F.3d at 103 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed.
Cir. 1996)).
B. Alleged Anticipation by OC PROPINK (Ex. 1003)
Petitioners argue that OC PROPINK anticipates the claimed design
because it discloses the same overall visual appearance as the claimed
design of the 670 patent. Pet. 24. Petitioners provide a visual comparison
of OC PROPINK and the sole figure depicting the insulation material
claimed in the 670 patent which we reproduce below:

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Taken from the Petition, the sole figure of the 670 patent is shown,
above, in comparison to OC PROPINK. Id. at 25.
Considering both designs for insulation material in the above
comparison, we agree with Petitioners that an ordinary observer would
perceive each design as exhibiting insulation material having a waffle
pattern and a cloudlike appearance with variations in a swirl pattern. Id. at
26, 29. Turning to the issue of color and variation of distinct hues, the

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claimed design in the 670 patent is a different color from OC PROPINK.
Our claim construction, however, is not limited to a specific color, but
includes colors which sufficiently impart a variation of distinct hues.
Patent Owner argues that the ordinary meaning of hue is color.
Prelim. Resp. 12 (citing Ex. 2001, 2). During prosecution the Applicant,
however, used hue and color differently,stating that hue in the applied
102 prior art reference, Foltz, was constant, Foltz discloses an insulation
material with the same hue yellow throughout. Ex. 1002, 19. On the
other hand, the Applicant explained that color in Foltz may vary: To the
extent there are variations in the color of Foltz, the hue remains constant and
the variations are merely the changes in the lightness of yellow. Id.
Neither the phrase distinct variations in hues nor the term hue, as used
by the Applicant in differentiating their claimed design from the prior art
during prosecution of the 607 patent, is effectively defined by Patent
Owners.
Regarding the phrase distinct variations in hue, Petitioners rely
upon their expert, Dr. Bide, to scientifically assess a variation of distinct
hues, . . . by performing spectrophotometric analysis. Pet. 29. Dr. Bide
testifies that he used a well-recognized standard called CIE to determine a
hue angle measured in degrees.11 Ex. 1012 33. From analysis of the
color photograph submitted during prosecution of the 670 patent, Dr. Bide
determined a variation of hue angle of 36.3 degrees. Id. 38. Assessing OC
11

We do not consider that spectrophotometric analysis would be a skill or

technique that an ordinary observer would apply to a comparison of designs.
On the record before us at this point in the proceeding we are persuaded to
accord some weight to Dr. Bides testimony and analysis with respect to the
measured variations in hue.

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PROPINK, Dr. Bide determined a variation of hue angle of 55.7 degrees.
Id. 40. Based on our own independent observation, and on the proffered
testimony of Dr. Bide, we are persuaded that OC PROPINK discloses a
distinct variation in hue as the claim is properly interpreted.
Accordingly, based on the information presented at this stage of the
proceeding, we are persuaded that there is a reasonable likelihood Petitioners
would prevail in showing the sole claim of the 670 patent is anticipated by
OC PROPINK.
C. Alleged Anticipation and Obviousness JM Spin Glas and
either of OC PROPINK, JM Microlite, and Knauf Crown Floor
Slab
Petitioners argue that the sole claim of the 670 patent is anticipated
by JM Spin Glas, or in the alternative, obvious over JM Spin Glas and either
OC PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 3137.
Patent Owners argue mainly that grounds 16 are premised on an
improper claim interpretation and, therefore, JM has failed to meet its
burden of showing that there is a reasonable likelihood that [it] would
prevail with respect to at least 1 of the claims challenged in [its] petition.
Prelim. Resp. 14 (citing 35 U.S.C. 314(a)). Patent Owners provide no
further substantive analysis or discussion relative to these proposed grounds
of unpatentability and assert only that [n]one of the cited art would appear
to the ordinary observer to look like the full color photograph of the design
patent. Id. at 15.
Petitioners provide a side-by-side comparison of the sole figure of the
670 patent and JM Spin Glas as reproduced below:

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The sole figure of the 670 patent is shown, above, on the left in sideby-side comparison to JM Spin Glas on the right. Id. at 32.
1. Anticipation
Considering both designs for insulation material, we agree with
Petitioners that an ordinary observer would perceive each design as
exhibiting insulation material having a cloudlike appearance with variations
in a swirl pattern. Id. at 33. Also, we determine that JM Spin Glas discloses
a distinct variation in hue based on our own observations and Dr. Bides
testimony that JM Spin Glas contains a variation of hue angles of 62.1
degrees which, like OC PROPINK discussed above, is greater than the
measured variation of hue angles of the claimed design. Ex. 1012 42 see
also Pet. 37. What is not readily apparent in JM Spin Glas is a waffle
pattern.

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Petitioners argue that the waffle pattern is inherent in insulation
material because it is a standard characteristic of the manufacturing process
of fiberglass insulation. Pet. 33 (citing Ex. 1014 610). Petitioners
asserted expert on insulation manufacturing, Mr. Granger, explains in his
Declaration, however, that in certain cases a surface of the insulation may
not have a waffle pattern, for instance when the insulation is cut in half after
the curing process, thus separating the top and bottom half, or when the
conveyor flights are caused to skid on the surface of the insulation. Ex.
1014 9. To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (citation omitted). Inherency is not proven by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient. Id. (citation omitted). We appreciate
Mr. Grangers explanation that [c]onveyor belts that are used in the process
off fabricating light-density fiberglass insulation share the common
characteristic that they imprint the heated glass fibers. Ex. 1014 8.
Petitioners expert, however, does not state that the curing and imprinting
process described in his Declaration is the only manner in which insulation
material is manufactured, only that it is common. Id. 6. Nor does Mr.
Granger state that the waffle pattern is necessarily present in all insulation
materials, or that the manufacturing always produces the same visual
appearance. See id. 8. Mr. Granger, in fact, testifies that sometimes a
pattern is not imprinted or observable on the surface of some insulation
materials. See id. 9. Although it may be quite common for insulation
material to have such a waffle pattern imprinted upon its surfaces, we are not

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persuaded by this evidence that such a waffle pattern is an inherent
characteristic of material insulation.
2. Obviousness
As discussed above, what is not readily apparent in JM Spin Glas is a
waffle pattern. To support its obviousness contentions, Petitioners turn to
any of OC PROPINK, JM Microlite, and Knauf Crown Floor Slab in which
a waffle pattern is arguably visible. Pet. 36. Petitioners argue that the
primary JM Spin-Glas reference has basically the same design
characteristics as the claimed 670 patent design. Id. at 3536 (citing
Durling, 101 F.3d at 103). Petitioners next contend that the combination of
any these references with JM Spin Glas would be obvious because all four
references are so related that the appearance of certain ornamental features
in one would suggest the application of those features to the other. Id.
(citing In re Borden, 90 F.3d at 1575).
We reproduce, below, the figures from each of the asserted secondary
references for purposes of comparison to JM Spin Glas.

The figure, above, is an image of insulation material disclosed in the

OC PROPINK reference. See Ex. 1003.

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The figure, above, is an image of insulation material disclosed in the

Knauf Crown Floor Slab reference. Ex. 1006.

The figure, above, is an image of different insulation materials

disclosed in the JM Microlite reference. Ex. 1005.

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As discussed above, we are persuaded by Petitioners evidence that JM
Spin Glas exhibits substantially the same visual impression as that observed
in the claimed design as a whole, including all the elements of the claim as it
is properly interpreted except for the waffle pattern, and is therefore an
appropriate Rosen reference. Observing the secondary references above, we
are further persuaded that each of these secondary references also depict
colored insulation material that creates a substantially similar overall visual
impression to JM Spin Glas and, thus, are so related to the primary reference
such that the appearance of certain ornamental features in one would suggest
the application of those features to the other as required under Durling.
Accordingly, on the record before us, we are persuaded that any of OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab, are so related in
appearance to JM Spin Glas that any of these references would have
suggested to an ordinary designer to modify JM Spin Glas to have a waffle
pattern and achieve the same overall visual appearance as the presently
claimed design.
D. Alleged Anticipation and Obviousness JM Spin Glas and JM
Microlite
This alleged anticipation and obviousness ground is similar to the
previous ground discussed above in III.C, involving the combination of JM
Spin Glas and JM Microlite. This ground further asserts purported evidence
of insulation material disclosed in JM Microlite as brown and cream. Pet.
5759. Petitioners assert that to the extent [JM Spin Glas] is deemed not to
include instances of the colors brown and cream, it would have been
obvious to incorporate a brown and cream design in light of JM Microlite
Blankets. Id. at 5758. For the reasons discussed above, we are persuaded
that JM Spin Glas is an appropriate primary reference and that JM Microlite

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is sufficiently related as insulation material, and in appearance, such that
certain ornamental features in one would suggest the application of those
features to the other.
As best observed in JM Microlite, reproduced above in III.C.2, this
photograph displays four examples of JM Microlite Blankets, including one
blanket of insulation material, the second from the bottom, which appears to
have a color and hue substantially similar to that of the color photograph in
the 670 patent, i.e. brown and cream. See Ex. 1005. On the record before
us, we are persuaded that JM Microlite is so related in appearance to JM
Spin Glas that it would have suggested to an ordinary designer to modify JM
Spin Glas to have a waffle pattern as well as the purported hue and color
of the brown and cream JM Microlite blanket and achieve the same
overall visual appearance as the presently claimed design.
E. Alleged Anticipation and Obviousness Soundproofing and
either of OC PROPINK, JM Microlite, and Knauf Crown Floor
Slab
Petitioners argue that the sole claim of the 670 patent is anticipated
by, or in the alternative, obvious over Soundproofing and either OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 3843.
As discussed above, Patent Owners provide no substantive analysis or
discussion relative to this proposed ground. See Prelim. Resp. 15.
Petitioners provide several side-by-side comparisons of the sole figure
of the 670 patent and photographs from Soundproofing, one of which we
reproduce below:

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The sole figure of the 670 patent is shown, above, on the left in
comparison to Soundproofing photograph, on the right, labeled
Soundproofing I. Pet. 39.
1. Anticipation
Considering the overall appearance of both designs for insulation
material, we agree with Petitioners that an ordinary observer would perceive
the insulation material shown in Soundproofing as exhibiting a cloudlike
appearance with variations in a swirl pattern substantially similar to the
claimed design. Id. at 40. Also, we are persuaded on the record before us
that Soundproofing discloses a distinct variation in hue based on our
observations and Dr. Bides testimony that Soundproofing contains
variations of hue angles of 49.7, 40.9, and 41.9 degrees, taken from three
different photographs in Soundproofing. Ex. 1012 44. These values are
each greater than the 36.3 measured variation of hue angles of the claimed
design. Id., see also Pet. 42.

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Soundproofing does not, however, disclose a waffle pattern.
Petitioners argue again that the waffle pattern is inherent in insulation
material because it is a standard characteristic of the manufacturing process
of fiberglass insulation. Pet. 4041 (citing Ex. 1014 610). For the
same reasons as discussed above relative to JM Spin Glas, we are also not
persuaded that Soundproofing inherently contains a waffle pattern.
2. Obviousness
For a waffle pattern, Petitioners turn to any of OC PROPINK, JM
Microlite, and Knauf Crown Floor Slab in which such a waffle pattern is
arguably visible. Pet. 41.12 Petitioners argue that Soundproofing meets the
requirement of a primary reference because [t]he Soundproofing images
have basically the same design characteristics as the claimed 670 patent
design. Id. (citing Durling, 101 F.3d at 103 (citation omitted)). Petitioners
then assert that the combination of any of these secondary references and
Soundproofing would be obvious because all four references are so related
that the appearance of certain ornamental features in one would suggest the
application of those features to the other. Id. (citing In re Borden, 90 F.3d
at 1575 (citation omitted)).
As discussed above with respect to Petitioners anticipation argument
in this ground, we are persuaded that Soundproofing exhibits substantially
the same visual impression and is basically the same as the claimed design,
including all the elements of the claim as it is properly interpreted, except
12

We do not, again, reproduce the photographs from the secondary

references. For purposes of reference, the relevant photographs from the OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab references are shown
above, with respect to the previous ground.

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for the waffle pattern, and is therefore an appropriate Rosen reference.
Observing the secondary references, we are further persuaded that each of
the secondary references also depict colored insulation material that creates
a substantially similar overall visual impression to Soundproofing and, thus,
are so related to the primary reference that the appearance of certain
ornamental features in one would suggest the application of those features to
the other as required under Durling. Accordingly, on the record before us,
we are persuaded that any of OC PROPINK, JM Microlite, and Knauf
Crown Floor Slab, would have suggested to an ordinary designer to modify
Soundproofing to include a waffle pattern and achieve the same overall
visual appearance of the presently claimed design.
F. Alleged Anticipation and Obviousness Soundproofing and JM
Microlite
This alleged anticipation and obviousness ground is similar to the
previous ground discussed above in III.E, involving the combination of
Soundproofing and JM Microlite. This ground further asserts purported
evidence of insulation material disclosed in JM Microlite as colored brown
and cream. Pet. 5759. Petitioners assert that to the extent
[Soundproofing] is deemed not to include instances of the colors brown and
cream, it would have been obvious to incorporate a brown and cream
design in light of JM Microlite Blankets. Id. at 5758. For the reasons
discussed above, we are persuaded that Soundproofing is an appropriate
Rosen reference and that JM Microlite is sufficiently related as insulation
material, and in appearance, such that certain ornamental features in one
would suggest the application of those features to the other.
As best observed in JM Microlite, reproduced above in III.C.2, this
reference displays images of four examples of JM Microlite Blankets,

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including one blanket of insulation material, the second from the bottom,
which appears by a reasonable observation to be of substantially similar
color and hue to that of the color photograph in the 670 patent, i.e. brown
and cream. See Ex. 1005. On the record before us, we are persuaded that
JM Microlite is so related to the primary reference that it would have
suggested to an ordinary designer to modify Soundproofing to include a
waffle pattern as well as the color and hue of JM Microlite and achieve the
same overall visual appearance of the presently claimed design.
G. Alleged Anticipation and Obviousness Knauf Timber Frame
and either of OC PROPINK, JM Microlite, and Knauf Crown
Floor Slab
Petitioners argue that the sole claim of the 670 patent is anticipated
by, or in the alternative, obvious over Knauf Timber Frame and either OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab. Pet. 4347.
As discussed above, Patent Owners provide no substantive analysis or
discussion relative to this proposed ground. See Prelim. Resp. 15.
Petitioners provide a comparison of the sole figure of the 670 patent
and a photograph from Knauf Timber Frame, which we reproduce below:

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The sole figure of the 670 patent is shown, above, in comparison to a

photograph from Knauf Timber Frame, labeled Knauf: Timber Frame
Walls. Pet. 44.

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1. Anticipation
Considering both designs for insulation material, we agree with
Petitioners that an ordinary observer would perceive the insulation material
shown in Knauf Timber Frame as exhibiting a cloudlike appearance with
variations in a swirl pattern substantially similar to the claimed design. Id.
at 40. Also, we are persuaded on the record before us that Knauf Timber
Frame discloses a distinct variation in hue based on our observations and
Dr. Bides testimony that Knauf Timber Frame contains variation of hue
angles of 37.2 degrees, based on analysis of the above photograph in Knauf
Timber Frame. Ex. 1012 46. This value is greater than the 36.3 measured
variation of hue angles of the claimed design. Id., see also Pet. 46.
Knauf Timber Frame does not, however, disclose a waffle pattern.
Petitioners argue again that the waffle pattern is inherent in insulation
material because it is a standard characteristic of the manufacturing process
of fiberglass insulation. Pet. 45 (citing Ex. 1014 610). For the same
reasons as discussed above relative to JM Spin Glas, we are not persuaded
that Knauf Timber Frame inherently contains a waffle pattern.
2. Obviousness
For a waffle pattern, Petitioners turn to any of OC PROPINK, JM
Microlite, and Knauf Crown Floor Slab in which such a waffle pattern is
arguably visible. Pet. 45. Petitioners argue that Knauf Timber Frame meets
the requirement of a primary reference because [t]he Knauf [images have]
basically the same design characteristics as the claimed [670 patent]
design. Id. (citing Durling, 101 F.3d at 103 (citation omitted)). Petitioners
then assert that the combination of any of these secondary references and
Knauf Timber Frame would be obvious because all four references are so

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related that the appearance of certain ornamental features in one would
suggest the application of those features to the other. Id. (citing In re
Borden, 90 F.3d at 1575).
As discussed above with respect to Petitioners anticipation argument,
we are persuaded that Knauf Timber Frame exhibits substantially the same
visual impression and is basically the same as the claimed design, including
all the elements of the claim as it is properly interpreted, except for the
waffle pattern, and is therefore an appropriate Rosen reference. Observing
the secondary references, we are further persuaded that each of the
secondary references also depict insulation material that creates a
substantially similar overall visual impression to Knauf Timber Frame and,
thus, are so related to the primary reference such that the appearance of
certain ornamental features in one would suggest the application of those
features to the other as required under Durling. Accordingly, on the record
before us, we are persuaded that any of OC PROPINK, JM Microlite, and
Knauf Crown Floor Slab would have suggested to an ordinary designer to
modify Knauf Timber Frame and achieve the same overall visual appearance
of the presently claimed design.
H. Alleged Anticipation and Obviousness Knauf Timber Frame
and JM Microlite
This alleged anticipation and obviousness ground is similar to the
previous ground discussed above in III.G, involving the specific
combination of Knauf Timber Frame and JM Microlite. This ground further
asserts purported evidence of insulation material disclosed in JM Microlite
as brown and cream. Pet. 5759. Petitioners assert that to the extent
[Knauf Timber Frame] is deemed not to include instances of the colors
brown and cream, it would have been obvious to incorporate a brown and

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cream design in light of JM Microlite Blankets. Id. at 5758. For the
reasons discussed above, we are persuaded that Knauf Timber Frame is an
appropriate Rosen reference and that JM Microlite is sufficiently related as
insulation material, and in appearance, such that certain ornamental features
in one would suggest the application of those features to the other.
As best observed in JM Microlite, reproduced above, in III.C.2, this
photograph displays four examples of JM Microlite Blankets, including one
blanket of insulation material, the second from the bottom, which appears to
have, not only a waffle pattern, but also a color and hue substantially similar
to that of the color photograph in the 670 patent, i.e. brown and cream. See
Ex. 1005. On the record before us, we are persuaded that JM Microlite
would have suggested to an ordinary designer to modify the primary
reference to include the waffle pattern as well as the color and hue of JM
Microlite and achieve the same overall visual appearance of the presently
claimed design.
I. Additional Grounds
Petitioners have also alleged grounds of unpatentability based on,
Owens Corning 2006 At A Glance Report, in view of either OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab, and Owens
Corning 2007 Progress Report, in view of either of OC PROPINK, JM
Microlite, and Knauf Crown Floor Slab. We exercise our discretion by not
instituting review on these additional grounds. See 37 C.F.R. 42.108(a).
IV. SUMMARY
For the foregoing reasons, we determine that the information
presented in the Petition establishes a reasonable likelihood that Petitioners

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would prevail on at least one alleged ground of unpatentability with respect
to the sole claim of the 670 patent.
The Board has not made a final determination on the patentability of
the challenged claim.
V. ORDER
For the reasons given, it is
ORDERED that inter partes review of the 670 patent is hereby
instituted as to the sole claim on the following unpatentability grounds:
1. Anticipation over OC PROPINK;
2. Obviousness over JM Spin Glass and either OC PROPINK, JM
Microlite, and Knauf Crown Floor Slab;
3. Obviousness over JM Spin Glass and JM Microlite;
4. Obviousness over Soundproofing and either OC PROPINK, JM
Microlite, and Knauf Crown Floor Slab;
5. Obviousness over Soundproofing and JM Microlite;
6. Obviousness over Knauf Timber Frame and either OC
PROPINK, JM Microlite, and Knauf Crown Floor Slab; and
7. Obviousness over Knauf Timber Frame and JM Microlite;
FURTHER ORDERED that no inter partes review is instituted on any
ground other than those specifically described above; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial on the
grounds of unpatentability authorized above; the trial commences on the
entry date of this decision.

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For PETITIONERS:
Kristopher L. Reed
David E. Sipiora (pro hac vice pending)
JMIPR@kilpatricktownsend.com

For PATENT OWNERS:

James R. Sweeney
james.sweeney@btlaw.com
Joshua P. Larsen
joshua.larsen@btlaw.com
Daniel J. Lueders
dlueders@uspatent.com

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