Claim Components Without Amount Or Function Limitations Anticipated By Bare Disclosure

• Published date: 10 May 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Melanie Magdun, Melissa Santos, Adriana L. Burgy, Shannon Patrick, Stacy Lewis, Thomas L. Irving and Amanda K. Murphy

Holding

In Neenah, Inc. v. Schwendimann, IPR2021-00016, Paper 26 (PTAB April 12, 2022), the Patent Trial and Appeal Board ("PTAB") issued a final written decision determining that all challenged claims are unpatentable as anticipated.

Background

Neenah challenged claims 5 and 19 of U.S. Pat. No. 7,008,746 ("the '746 patent"):

Claim 5. A coated transfer sheet comprising: a substrate having a first and second surface; and at least one release layer overlaying said first surface, said release layer comprising a film forming binder, a wax emulsion, and a retention aid.

Claim 19. A method of applying an image to a receptor element which comprises the steps of: (i) imaging a coated transfer sheet according to claim 5; (ii) positioning the front surface of the transfer sheet against said receptor element, (iii) applying energy to the rear surface of the imaging system to transfer said image to said receptor element, (iv) optionally allowing the substrate to cool, and (v) removing the transfer sheet from the substrate.

Neenah asserted claim 5 was anticipated based on five references: Kronzer-769, Kronzer-179, Hiyoshi, Taniguchi, and Oez and that claim 19 was anticipated based on the same references except for Oez.

PTAB Claim Construction

The PTAB began by construing the disputed claims terms, "film forming binder" and "retention aid." The petitioner argued that the terms do not require a specific amount of the recited materials, nor do they require the materials perform a specific function. Id. at *9. The patent owner argued that the claims required each material to be present "in a sufficient amount to actually provide the desired characteristic." Id. at *9. The patent owner also argued that the PTAB should adopt the same claim construction as the District Court of Delaware:

"film forming binder" means "a material, or a combination of materials, that facilitates release and/or adhesion of the composition;" and

"retention aid" means "a material that aids in the binding of an applied colorant."

Id. at *11.

However, the PTAB found that, based on the language of the claims, "there is no express requirement of a specific amount of a 'film forming binder,' a wax emulsion, or retention aid, in any of the challenged claims. Nor is there an express requirement in any of the challenged claims that the 'film forming binder,' wax emulsion, or retention aid perform a particular function." Id. at *12-13. According to the Board, construing the claim by function would...