Takeaway: The mere assertion that two references are from the same field of endeavor does not constitute requisite articulated reasoning with rational underpinnings necessary in order to show why one of ordinary skill in the art would have combined the references.

In its Decision, the Board concluded that Petitioners had not demonstrated a reasonable likelihood that at least one of the challenged claims of the ’756 patent is unpatentable. Thus, the Board ordered that the Petition was denied.The Board concluded that Petitioners had not demonstrated a reasonable likelihood that at least one of the challenged claims of the ’756 patent is unpatentable. Thus, the Board ordered that the Petition was denied.

Petitioner had challenged claims 1-38 of the ’756 patent, which relates to “water-dispersible pellets,” or “water-dispersible methylene urea particles for the delivery of biomolecules.” These challenges were based on a number of references asserted under both 35 U.S.C. § 102 and § 103.

Regarding Petitioners’ contention that claims 1-38 would have been obvious over Welshimer taken in combination with Neyman, the Board found Petitioners’ statement that “Welshimer and Neyman are from the same field of endeavor” to fall short of the articulated reasoning and rational underpinnings that were needed in order to show “why one of ordinary skill in the art would modify the teachings of Welshimer in view of Neyman’s teachings to arrive at the claimed invention.” In short, the Board found that “Petitioners do not provide a persuasive, fact-based analysis to support the claimed combination of Welshimer and Neyman.”

As for Petitioners’ assertion that claims 1-9, 14-21, 23-27, 29, and 35-38 are anticipated by Buchholz, the Board concluded that Petitioners had not sufficiently demonstrated that the recited “contact with water causes particle dispersion into more than 100 pieces” was inherently disclosed by Buchholz. With respect to Petitioners’ contention that claims 10-12, 22, 28, and 30-34 would have been obvious in view of Buchholz and Welshimer, the Board found that Petitioners had not established a supporting rationale for the claimed combination.

In addressing Petitioners’ assertion that claims 1, 4, 5, 9, 10, 12, and 14-38 were anticipated by Miele, the Board agreed with Patent Owner “that the information presented does not show sufficiently that Miele inherently describes pellets or granules that disperse into more than 100 pieces upon contact with water as required by every challenged claim.” In reply to the argument that claims 2 and 3 would have been obvious over the combination of Miele and Neyman, the Board found that Petitioners had not provided sufficient supporting rationale as to why one skilled in the art would combine Miele and Neyman.”

As for the unpatentability grounds based on Sensibaugh, which were supported by a Sensibaugh Declaration, the Board refused to consider any information not provided in the Petition that was instead “incorporated by reference to the cited paragraphs in the Sensibaugh Declaration.” To do otherwise, according to the Board, would impermissibly allow Petitioners to incorporate by reference the arguments from the Sensibaugh Declaration into the Petition, and to circumvent the page limits imposed on petitions for inter partes review.

Plant Science, Inc. and Enviro Granulation, Ltd. v. The Andersons, Inc., IPR2014-00939
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: December 17, 2014
Patent: 6,884,756 B2
Before: Toni R. Scheiner, Rama G. Elluru, and Jo-Anne M. Kokoski
Written by: Kokoski
Related Proceedings: The Andersons, Inc. v. Enviro Granulation, Case No. 8:13-cv-3004-VMC-MAP (M.D. Fla.)