R2 Saves The Day: You Gotta Release And Remove

• Published date: 22 August 2022
• Subject Matter: Intellectual Property, Real Estate and Construction, Patent, Construction & Planning
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Melissa Santos, Taylor K. Stark, Adriana Burgy and Stacy Lewis

Holding:

In Fluid Energy Group Ltd. v. Green Products and Technologies, LLC, IPR2021-00357, Paper 48 (P.T.A.B. July 5, 2022), the Patent Trial and Appeal Board ("the Board") issued a Final Written Decision finding no challenged claims unpatentable even though an inter partes review ("IPR") was instituted.

Background:

Fluid Energy filed an IPR petition challenging the patentability of claims 1-8 of U.S. Patent No. 7,938,912 ("the '912 patent"), assigned to Green Products, under 35 U.S.C. '103. The asserted prior art references were U.S. patents, a Canadian patent, and a material safety data sheet.

Independent claim 1 of the '912 patent reads:

A method for cleaning a surface of a cementitious material comprising:
providing a composition comprising HCl, urea, complex substituted keto-amine-hydrochloride, an alcohol, an ethoxylate, and a ketone;
applying the composition to a surface to release a cementitious material therefrom; and
removing the composition and released cementitious material from the surface.

(Emphases added.) Claims 2-4 specify chemical components, claim 5 recites a weight percentage concentration limitation, claim 6 recites a range of dilution levels, and claims 7 and 8 add additional steps to the claimed method.

The Board's Claim Construction: The Board began by analyzing the preamble of claim 1. It found the preamble's use of the word "of" to be inconsistent with the body of the claim and the specification, which "plainly identify the object of the claimed invention as 'removing cementitious materials from surfaces.'" Id. at *11 (emphasis in original). Furthermore, "the body of the claim fully and completely sets forth all of the required method steps of the invention, as well as the components of the required composition." Id. at *12. The preamble was not to be construed as reciting an additional required step. "[T]he preamble's mention of 'cleaning' is a nonlimiting intended use of the composition specified in the body of the claim." Id. at *13.

Turning to the step of "applying the composition to a surface to release a cementitious material therefrom," the Board agreed with Patent Owner that the surface of the material is separate from the cementitious material. There are "two distinctly claimed structures (i.e., 'a Surface' and 'a cementitious material')." Id.

The Board discussed Petitioner's argument that the claims support the application of the composition to a surface of a cementitious material to remove a released "efflorescence." Id. at *15. The specification "discloses an embodiment in which '[t]he composition can be used as a base for a plurality of dilution levels to be used for different applications,' including 'as an efflorescence remover on cementitious materials (concrete block, brick, precast, paver, cement, and masonry),'" but "that [efflorescence] embodiment is not supported by the...