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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`RAYMARINE, INC.
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`Petitioner
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`v.
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`NAVICO HOLDING AS
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`Patent Owner
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`____________
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`
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`Case IPR2013-00496
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`Patent 8,305,840
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`____________
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`
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`Before SALLY C. MEDLEY, Administrative Patent Judge.
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`LEGAL02/34505492v1
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`
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ............................................................................................. 1
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`II. RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`
`REQUESTED RELIEF .............................................................................................. 1
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`(A) Unsupported Allegations ................................................................................ 2
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`(B) The Teachings of DeRoos .............................................................................. 3
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`(C) Consideration of Prior Art by the Examiner .................................................. 7
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`III. RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`
`AND THE PROSECUTION HISTORY ................................................................... 8
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`IV. CLAIM CONSTRUCTION.............................................................................10
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`(A) “A Single Linear Downscan Transducer Element” ....................................11
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`i. “Single Linear Downscan Transducer Element” .....................................12
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`ii. “Single Linear Downscan Transducer Element” .....................................13
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`iii. “Single Linear Downscan Transducer Element” ......................................13
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`(B) “A Fan-Shaped Sonar Beam” .....................................................................15
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`(C) “Sequentially Insonify Different Fan-Shaped Regions of the Underwater
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`Environment” ..............................................................................................16
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`(D) “Composite Of Images Of The Fan-Shaped Regions” ...............................17
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`(E) “Configuration Settings Defining A Predefined Set Of Display Images
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`That May Be Presented” .............................................................................18
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`V. ARGUMENT ...................................................................................................20
`
`LEGAL02/34505492v1
`
`i
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`
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`(A) U.S. Patent No. 5,791,552 to Boucher et al. Is Not Prior Art .....................21
`
`(B) Petitioner’s Challenges #2 and #3 are Redundant Over Challenge #1 .......23
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`(C) Petitioner’s Challenge #5 and #6 are Redundant Over Challenge #4 ........26
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`(D) Petitioner’s Challenges to Claims 3, 29, 31, 60, and 61 Do Not Have a
`
`Reasonable Likelihood of Success ..............................................................28
`
`i. Challenge #1 to Claims 3 and 31 Does Not Have a Reasonable
`
`Likelihood of Success ...............................................................................31
`
`a) Hydrography and Adams Fail to Teach Selectable Operating
`
`Frequencies of About 455 kHz and 800 kHz ..................................32
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`ii. Challenge #1 to Claim 29 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................35
`
`a) Hydrography Is Not Cited As Teaching A Sonar Module That
`
`Comprises Configuration Settings Defining a Predefined Set of
`
`Display Images ...............................................................................35
`
`b) Adams Fails To Teach A Sonar Module That Comprises
`
`Configuration Settings Defining a Predefined Set of Display
`
`Images ............................................................................................36
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`iii. Challenge #1 to Claim 60 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................37
`
`a) Hydrography Is Not Cited As Teaching A Sonar Signal Processor
`
`Configured To Implement A Notice Or Alarm Regarding The
`
`Proximity Of Other Watercraft ......................................................37
`
`LEGAL02/34505492v1
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`ii
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`
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`b) Adams Fails To Teach A Sonar Signal Processor Configured To
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`Implement A Notice Or Alarm Regarding The Proximity Of Other
`
`Watercraft.......................................................................................37
`
`iv. Challenge #1 to Claim 61 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................39
`
`a) Hydrography Is Not Cited As Teaching That The Processor, In
`
`Combination With A Memory, Stores Incoming Transducer Data
`
`Or Screen Images For Future Playback Or Transfer ....................39
`
`b) Adams Fails To Teach That The Processor, In Combination With A
`
`Memory, Stores Incoming Transducer Data Or Screen Images For
`
`Future Playback Or Transfer .........................................................40
`
`v. Challenge #2 to Claims 3 and 31 Does Not Have a Reasonable
`
`Likelihood of Success ...............................................................................40
`
`a) Hydrography, Adams, and Boucher ‘552 Fail to Teach Selectable
`
`Operating Frequencies Of About 455 kHz and 800 kHz ...............41
`
`vi. Challenge #2 to Claim 29 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................44
`
`a) Hydrography and Boucher ‘552 Are Not Cited As Teaching A
`
`Sonar Module That Comprises Configuration Settings Defining a
`
`Predefined Set of Display Images ..................................................44
`
`b) Adams Fails To Teach A Sonar Module That Comprises
`
`Configuration Settings Defining a Predefined Set of Display
`
`Images ............................................................................................45
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`LEGAL02/34505492v1
`
`iii
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`
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`vii. Challenge #2 to Claim 60 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................46
`
`a) Hydrography and Boucher ‘552 Are Not Cited As Teaching A
`
`Sonar Signal Processor Configured To Implement A Notice Or
`
`Alarm Regarding The Proximity Of Other Watercraft ..................46
`
`b) Adams Fails To Teach A Sonar Signal Processor Configured To
`
`Implement A Notice Or Alarm Regarding The Proximity Of Other
`
`Watercraft.......................................................................................46
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`viii. Challenge #2 to Claim 61 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................48
`
`a) Hydrography and Boucher ‘552 Are Not Cited As Teaching That
`
`The Processor, In Combination With A Memory, Stores Incoming
`
`Transducer Data Or Screen Images For Future Playback Or
`
`Transfer ..........................................................................................48
`
`b) Adams Fails To Teach That The Processor, In Combination With A
`
`Memory, Stores Incoming Transducer Data Or Screen Images For
`
`Future Playback Or Transfer .........................................................49
`
`ix. Challenge #3 to Claims 3 and 31 Does Not Have a Reasonable
`
`Likelihood of Success ...............................................................................50
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`a) Hydrography, Adams, Boucher ‘798, and DeRoos Fail to Teach
`
`Selectable Operating Frequencies Of About 455 kHz and 800 kHz
`
` 50
`
`x. Challenge #3 to Claim 29 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................53
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`LEGAL02/34505492v1
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`iv
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`
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`a) Hydrography, Boucher ‘798, and DeRoos Are Not Cited As
`
`Teaching A Sonar Module That Comprises Configuration Settings
`
`Defining a Predefined Set of Display Images ................................54
`
`b) Adams Fails To Teach A Sonar Module That Comprises
`
`Configuration Settings Defining a Predefined Set of Display
`
`Images ............................................................................................54
`
`xi. Challenge #3 to Claim 60 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................55
`
`a) Hydrography, Boucher ‘798, and DeRoos Are Not Cited As
`
`Teaching A Sonar Signal Processor Configured To Implement A
`
`Notice Or Alarm Regarding The Proximity Of Other Watercraft .56
`
`b) Adams Fails To Teach A Sonar Signal Processor Configured To
`
`Implement A Notice Or Alarm Regarding The Proximity Of Other
`
`Watercraft.......................................................................................56
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`xii. Challenge #3 to Claim 61 Does Not Have a Reasonable Likelihood of
`
`Success ......................................................................................................58
`
`a) Hydrography, Boucher ‘798, and DeRoos Are Not Cited As
`
`Teaching That The Processor, In Combination With A Memory,
`
`Stores Incoming Transducer Data Or Screen Images For Future
`
`Playback Or Transfer .....................................................................58
`
`b) Adams Fails To Teach Wherein The Processor, In Combination
`
`With A Memory, Stores Incoming Transducer Data Or Screen
`
`Images For Future Playback Or Transfer .....................................58
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`VI. PATENT OWNER LEAVES PETITIONER TO ITS BURDEN ...................59
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`LEGAL02/34505492v1
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`v
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`
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`VII. CONCLUSION ................................................................................................60
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`LEGAL02/34505492v1
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`vi
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`
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`TABLE OF AUTHORITIES
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`Cases
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`Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961); ....... 8
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) 10, 15,
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`17, 18
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`Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 521 (1972) ....................... 9
`
`Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985) .......................... 30, 33, 42, 51
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`In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) .......................... 33, 38, 42, 47, 51, 56
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`Liberty Mutual Ins. Co. v. Progressive Casualty Inc. Co., CBM2012-00003 (Paper
`
`No. 7), at 3 (PTAB, Oct. 25, 2012) .......................................................... 24, 26, 27
`
`Sony Corporation v. Yissum Research Development Company of the Hebrew
`
`University of Jerusalem, IPR2013-00326 (Paper No. 14), at 6-8 (PTAB, Sep. 24,
`
`2013) ......................................................................................................................29
`
`Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) .......................... 9
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) ........... 8
`
`Statutes
`
`35 U.S.C. §102(e) ....................................................................................................22
`
`35 U.S.C. §103(a) ................. 9, 32, 33, 36, 38, 40, 42, 45, 47, 50, 51, 55, 57, 59, 61
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`Other Authorities
`
`Federal Register Vol. 77, No. 157, pg. 48764 (August 14, 2012) ...........................23
`
`Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284,329 (2011)
`
`(“AIA”)..................................................................................................................10
`
`MPEP §2141.02 .....................................................................................................8, 9
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`MPEP §715.07(II) ....................................................................................................24
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) ..10
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`Rules
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`LEGAL02/34505492v1
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`vii
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`37 C.F.R. §1.131 ......................................................................................................23
`37 C.F.R. §1.131 ...................................................................................................... 23
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`37 C.F.R. §1.56 .......................................................................................................... 7
`37 C.F.R. §1.56 .......................................................................................................... 7
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`37 C.F.R. §42.100(b) ...............................................................................................10
`37 C.F.R. §42.100(b) ............................................................................................... 10
`
`37 C.F.R. §42.107(a) ............................................................................................1, 23
`37 C.F.R. §42.107(a) ............................................................................................ 1, 23
`
`37 C.F.R. §42.108(c) ......................................................................... 1, 21, 31, 61, 62
`37 C.F.R. §42.108(c) ......................................................................... 1, 21, 31, 61, 62
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`LEGAL02/34505492v1
`LEGAL02/34505492v1
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`viii
`Viii
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`LIST OF EXHIBITS
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`NAV – 2001
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`DECLARATION BY ALAN PROCTOR TO ESTABLISH
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`CONCEPTION AND REDUCTION TO PRACTICE PRIOR
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`TO AUGUST 28, 2008
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`
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`LEGAL02/34505492v1
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`ix
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`
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`Petitioner Raymarine, Inc. filed a second Petition for Inter Partes Review
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`(“the Petition”) of U.S. Patent No. 8,305,840 (“the ‘840 patent”) on August 6, 2013
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`for Claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, 69. Pursuant to 37 C.F.R.
`
`§42.107(a), Patent Owner, Navico Holding AS, submits the following Preliminary
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`Response, setting forth reasons why an inter partes review should not be instituted.
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`
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`I.
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`INTRODUCTION
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`As presented in greater detail herein, Petitioner has failed to meet its burden
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`under 37 C.F.R. §42.108(c) of establishing a reasonable likelihood of success that
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`any of Claims 3, 10-11, 24, 26, 29, 31, 33, 44, 46-53, 56-62, 69 would be
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`unpatentable based on its challenges. Accordingly, Patent Owner requests that the
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`Board deny institution of an inter partes review.
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`
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`II.
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`RESPONSE TO PETITIONER’S SUMMARY OF REASONS FOR
`
`REQUESTED RELIEF
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`The Summary of Reasons section of the Petition is merely remarks that are
`
`unsupported by any evidence or reasoning, and mischaracterize the references in
`
`the Petition.
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`
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`LEGAL02/34505492v1
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`1
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`
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`(A) Unsupported Allegations
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`Petitioner mischaracterizes the disclosure of the ‘840 patent and alleges that
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`“[a]ll of these features were known in the art prior to 2009, when the application
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`that issued as the ‘840 patent was filed,” and that “[s]ingle transducer elements in
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`all shapes and sizes and mounted to watercraft in a wide variety of orientations (of
`
`course including the default ‘vertically down’ orientation) were known to persons
`
`of ordinary skill in the art before 2009.” See Page 3 of the Petition. These
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`allegations should be given no weight because Petitioner has failed to cite any prior
`
`art teachings in support. Contrary to Petitioner’s allegations, embodiments of the
`
`claimed invention, including but not limited to, a sonar system with a linear
`
`transducer element mounted to a watercraft to project sonar pulses in a direction
`
`substantially perpendicular to surface of the water, were not known to persons of
`
`ordinary skill in the art before the invention date of the ‘840 patent, as confirmed
`
`by the prior art evaluated by the Examiner. The insinuation by Petitioner that it was
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`known to orient all known types of transducers in any and all possible directions is
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`merely wishful thinking. Not only is it unsupported, it is untrue, and should be
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`given no weight, as confirmed by the teachings of DeRoos.
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`LEGAL02/34505492v1
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`2
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`(B) The Teachings of DeRoos
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`Petitioner relies heavily on DeRoos. DeRoos is a survey of many different
`
`and disparate types of underwater sensors, noting that each has a different structure
`
`and configuration, and operates in different ways, to collect different types of data
`
`and achieve different results. None of its teachings, however, disclose the
`
`invention claimed in the ‘840 patent. Indeed, DeRoos suggests choosing the
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`proper sensor and system based on its unique characteristics, not to combine
`
`together all the features and characteristics of each. DeRoos distinguishes between
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`active and passive sonar systems, different materials for transducers, different
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`transducer shapes, different sonar beam patterns, different echo patterns, and
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`different sonar pulse frequencies. The unique characteristics of each system are
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`tailored for different sonar objectives, such as side scan, obstacle avoidance,
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`bathymetric surveys, location and characterization of objects such as the sea
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`bottom, and damage assessment of a boat hull. Different techniques are used to
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`create different acoustic images, such as broad beam acoustic sources, filled array
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`sources, and synthetic aperture sources, and they may be energized with
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`simultaneous or sequentially scanned pulses, with some sensors dedicated to
`
`emitting a pulse and others dedicated to receiving an echo, and still others tasked
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`with doing both. Different methods are used for acoustic imaging, including
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`electronic beam forming, focused acoustic imaging, and holographic acoustic
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`LEGAL02/34505492v1
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`3
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`
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`imaging. Different transducer shapes and sizes are used to tailor acoustic beam
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`shapes, and can include point sources, line sources, rectangular sources, square
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`sources, parallelogram-shaped sources, circular sources, and multiple combinations
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`thereof arrayed in different configurations. Different sonar beam angles collect
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`data from different areas, and, depending upon the angle of incidence of the beam,
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`different types of data, including the absence of data. Different locations for the
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`transducer are used to influence the data collected, and the transducer (or an array
`
`of transducers) may be mounted to a tow fish, a stanchion fixed to the sea floor, a
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`rotatable post, an autonomously movable underwater robot, the forward portion of
`
`a boat hull, the side of a boat hull, the stern of a boat hull, or booms extending
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`from one or more parts of the watercraft, either above or below the water surface.
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`Recognizing the nearly unlimited options available for sonar systems, DeRoos
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`focuses on only five sonar systems that are very different both structurally and
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`functionally: side scan sonar, forward-look sonar, bathymetric sonar, profiling
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`sonar and 3-D mapping sonar. Importantly, DeRoos fails to disclose a linear
`
`transducer element mounted to a watercraft to project sonar pulses perpendicular to
`
`the surface of the water.
`
`The first part of the DeRoos quote provided by Petitioner concerns Section
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`3.3.1.3.2, entitled “Forward-Look Sonar,” which uses scanning or multi-beam
`
`sonar “to image the area in front of the vehicle.” See page 129 of DeRoos. DeRoos
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`LEGAL02/34505492v1
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`4
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`
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`describes possible types of forward-look sonars as either “single beam” that are
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`“mechanically scanned” to cover the field of vision (FOV), or “multi-beam sonars,
`
`called scan within a pulse (SWAP) sonars.” See Page 124 of DeRoos. Examples of
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`Forward-Look Sonar are listed in Table 3-15. Notably, all of the sonar systems in
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`Table 3-15 either require more than one beam (see Column 5 “Number of Beams”)
`
`or are mechanically scanned (MS) (see Column 2 “Type”), distinguishing them
`
`from the single linear downscan transducer element which produces a fan shaped
`
`beam as claimed in the ‘840 patent.
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`The second part of the DeRoos quote provided by Petitioner is from a
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`completely different section entitled “Bathymeric Sonar, Section 3.3.1.3.3.” This
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`section describes a multi-element “swath” sonar system having “a fan of
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`contiguous beams within the transmitted beam.” See page 129 of DeRoos. The
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`following is the full excerpt of DeRoos relating to bathymetric sonar (the italicized
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`section was omitted in Petitioner’s quote):
`
`Bathymeric, or down-looking sonars, are used for bottom contour
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`mapping, depth sensing, fish finding, altitude sensing, and other
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`similar tasks. The bathymetric sonars are very similar to forward-look
`
`sonars except that they are aimed downward. The transmitted beam is
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`narrow along the travel path of the sonar and wide in the plane normal
`
`to the direction of travel. A fan of contiguous beams within the
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`LEGAL02/34505492v1
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`5
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`
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`transmitted beam are used to receive detailed bottom mapping
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`information over a wide swath centered beneath the sonar. [Emphasis
`
`added].
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`From the above full quote from DeRoos, it is clear that the bathymetric sonar, like
`
`the down-looking sonar, is also a multi-element sonar, distinguishing it from the
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`claimed single linear downscan transducer element which produces a fan-shaped
`
`beam. See e.g., the Amendment After Final filed by the Applicant on February 21,
`
`2012 (RAY-1002).
`
`In quoting and relying upon DeRoos, Petitioner took inappropriate liberties
`
`to the point that its purported quotation chops out crucial statements, and
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`conspicuously omits entire sentences, paragraphs and section headings in an
`
`attempt to rewrite the DeRoos reference. Petitioner’s contrivance converts DeRoos
`
`from a disciplined, chapter by chapter description of the multiple differences
`
`among diverse sonar systems into a wishing well of interchangeable options. This
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`approach ignores the structural, operational, and technical incompatibility that such
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`a haphazard amalgamation would cause. DeRoos does not connect these disparate
`
`technologies, or suggest or teach combining them; instead, it separates them in
`
`structure and function, with the separate sections teaching away from the Patent
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`Owner’s invention. Petitioner proposes merely picking and choosing blindly to
`
`combine these different sonar teachings, but that is something one of skill in the art
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`LEGAL02/34505492v1
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`6
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`
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`would never do. Indeed, unable to find what it was looking for, and ignoring the
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`inconvenient teachings requiring the use of scanning or multi-element transducers,
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`Petitioner’s sleight-of-hand confirms that the DeRoos reference fails to disclose the
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`claimed invention of the ‘840 patent.
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`
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`(C) Consideration of Prior Art by the Examiner
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`There is no relevance or merit to Petitioner’s complaint that the Examiner
`
`was “buried in a flood” of references during prosecution of the ‘840 patent. Every
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`reference cited by Patent Owner during prosecution was cited to fully comply with
`
`the applicant’s duty of candor under 37 C.F.R. § 1.56, which includes no
`
`requirement of “citations or indications of relevance.” Applicant fully compiled
`
`with its duty and took extra steps to ensure that the Examiner had ample time to
`
`fully consider the cited references. To begin, Applicant’s representatives held an
`
`interview with the Examiner to discuss the prior art submitted. See Applicant-
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`Initiated Interview Summary of November 16, 2011 (RAY 1002, p. 401)
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`(“Applicant’s representatives discussed additional prior art from recently filed
`
`IDS.”). The Petitioner references the Examiner’s statement in the Final Office
`
`Action dated December 20, 2011, that “due to the excessive number of references,
`
`they have only been given a cursory review.” Following that statement, Applicant
`
`requested that the “references be given full review and consideration.” See
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`LEGAL02/34505492v1
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`7
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`
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`Response After Final of February 21, 2012 (RAY 1002, p. 295). Still further, the
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`follow-on Request for Continued Examination filed March 5, 2012 (RAY-1002,
`
`pgs. 268-269) gave the Examiner ample time to fully reconsider each cited
`
`reference. The file history is clear: the Examiner duly considered each reference
`
`during prosecution, with all information disclosure statements being signed by the
`
`Examiner confirming that each reference was properly considered.
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`
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`III. RESPONSE TO PETITIONER’S OVERVIEW OF THE ‘840 PATENT
`
`AND THE PROSECUTION HISTORY
`
`Petitioner mischaracterizes remarks made in Applicant’s Amendment of
`
`Nov. 30, 2011, to create the illusion that the “only alleged point of novelty was
`
`pointing a rectangular transducer downward from a watercraft.” See Page 8 of the
`
`Petition. Petitioner is improperly suggesting that this is the “gist or heart” of the
`
`claimed invention, ignoring both the claim language and the fact that the Supreme
`
`Court and the Court of Appeals for the Federal Circuit long ago established that
`
`“there is no legally recognizable or protected essential element, gist or heart of the
`
`invention in a combination patent.” See Aro Mfg. Co. v. Convertible Top
`
`Replacement Co., 365 U.S. 336, 345 (1961); see also MPEP §2141.02(II) (stating
`
`that “[d]istilling an invention down to the ‘gist’ or ‘thrust’ of an invention
`
`disregards the requirement of analyzing the subject matter ‘as a whole’”) (quoting
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`LEGAL02/34505492v1
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`8
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`
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`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)).
`
`Patents are granted not to individual points of novelty, but to claimed inventions,
`
`which are combinations of features interrelated in a particular way. It is well
`
`established that the claims, taken in their entirety, define the invention. See, e.g.,
`
`MPEP §2141.02(I) (stating that “[i]n determining the differences between the prior
`
`art and the claims, the question under 35 U.S.C. 103 is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious”) (citing, among others, Stratoflex, Inc. v.
`
`Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); see also Deepsouth Packing Co.
`
`v. Laitram Corp., 406 U.S. 518, 521 (1972) (stating that “[t]he patents were
`
`warranted not by the novelty of their elements but by the novelty of the
`
`combination they represented”). Thus, each and every element of each claim of the
`
`‘840 patent must be given its own patentable weight.
`
`Finally, it is unclear precisely what point Petitioner is trying to make when it
`
`states that Claim 73 “does not expressly recite the ‘single’ and ‘downscan’
`
`limitations, which is inconsistent with the prosecution history and the admitted
`
`prior art.” See Page 9 of the Petition. Claim 73 was duly considered and allowed
`
`over all prior art of record. Moreover, Claim 73 forms no part of any of the
`
`challenges presented in the Petition and is therefore irrelevant in this proceeding.
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`
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`LEGAL02/34505492v1
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`9
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`
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`IV. CLAIM CONSTRUCTION
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284,329 (2011) (“AIA”), when
`
`considering whether to institute an inter partes review, the Board has indicated that
`
`it will construe claims by applying the broadest reasonable interpretation in light of
`
`the specification. 37 C.F.R. §42.100(b); see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a “heavy
`
`presumption” that a claim term carries its ordinary and customary meaning. CCS
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However,
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`a “claim term will not receive its ordinary meaning if the patentee acted as his own
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`lexicographer and clearly set forth a definition of the disputed claim term in either
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`the specification or prosecution history.” Id.
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`In the Petition, Petitioner attempts to construe the following four claim
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`terms:
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`(A) “a single linear downscan transducer”;
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`(B) “fan-shaped sonar beam”;
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`(C) “sequentially insonify different fan-shaped regions of the
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`underwater environment”; and
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`(D) “composite images of the fan-shaped regions.”
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`Patent Owner presents the following remarks regarding the construction of claim
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`terms (A), (B), (C), and (D) above. Additionally, Patent Owner also presents a
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`claim construction for the following claim term not otherwise construed by
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`Petitioner:
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`(E) “configuration settings defining a predefined set of display images
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`that may be presented” (Claim 29).
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`(A)
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`“A Single Linear Downscan Transducer Element”
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`In presenting its proposed interpretation of the claim term “a single linear
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`downscan transducer,” Petitioner fails to accept, or even assess, the plain and
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`ordinary meaning of the phrase. Instead, it picks and chooses, pointing to some
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`portions of the specification and prosecution history of the ‘840 patent but ignoring
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`others. In particular, Petitioner points to the Amendment After Final filed by the
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`Applicant on February 21, 2012 and requests that the claim term be construed as:
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`“a downwardly directed transducer comprising either a single monolithic
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`rectangular shaped transducer element or a plurality of transducer elements
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`arranged end-to-end and electrically connected to act as a single rectangular
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`element.”
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`Patent Owner agrees that the specification and prosecution history are
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`important for construing a claim term, and here the intrinsic evidence confirms that
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`the plain and ordinary meaning is clear to one skilled in the art. Petitioner’s
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`interpretation, however, is not accurate. The claim term “a single linear downscan
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`transducer element” contains several well understood parts, and each is addressed
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`below (e.g., the italicized term in each of the following sections).
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`i.
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`“Single Linear Downscan Transducer Element”
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`The specification provides an example of a “linear transducer element” as
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`being “substantially rectangular in shape.” The “rectangular arrangement provides
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`for an approximation of a linear array having beamwidth characteristics that are a
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`function of the length and width of the rectangular face of the transducer elements
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`and the frequency of operation.” See Col. 9, line 36 – Col. 10, line 10 of the ‘840
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`patent. The term “linear transducer element” is further described as part of the
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`express language of independent Claims 1 and 23. Claim 1 recites that the “linear
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`downscan transducer element” must have a “substantially rectangular shape
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`configured to produce a fan-shaped beam having a relatively narrow beamwidth in
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`a direction parallel to a longitudinal length of the linear downscan transducer
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`element and a relatively wide beamwidth in a direction perpendicular to the
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`longitudinal length of the transducer element.” This accords with description of a
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`linear transducer element throughout the specification, such as one example
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`embodiment described in Col. 9, line 51 – Col. 10, line 10 of the ‘840 patent.
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`Further evidence of a linear transducer element that is substantially rectangular in
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`shape and configured to produce a fan-shaped beam can be seen in FIGs. 6, 7A,
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`and 7B of the ‘840 patent (for example, see element 60 and the illustrated beam).
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`ii.
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` “Single Linear Downscan Transducer Element”
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`The specification provides an example of a “downscan” element as being
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`“positioned to scan substantially below the vessel.” See Col. 11, lines 1 – 2 of the
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`‘840 patent. The term “downscan” is further described as part of the express
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`language of independent Claims 1 and 23. Claim 1 recites that the “linear
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`downscan transducer element is positioned within the housing to project fan-
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`shaped sonar beams in a direction substantially perpendicular to a plane
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`corresponding to the surface of the body of water.” This accords with the
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`descriptions and illustrations of a linear downscan transducer element throughout
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`the specification, such as the example embodiment described in Col. 11, lines 25 –
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`48 of the ‘840 patent. Further evidence of a linear downscan transducer element
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`can be seen in FIGs. 6, 7A, 7B, 8B, 17A, and 17B of the ‘840 patent.
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`iii.
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`“Single Linear Downscan Transducer Element”
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`The prosecution history of the ‘840 patent provides guidance to the meaning
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`of the term “single” in reference to a linear transducer element. In the Amendment
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`After Final filed by the Applicant on February 21, 2012 (RAY-1002), the
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`Applicant stated that the claims had been amended to “recite that there is a single
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`such linear downscan transducer element (to distinguish over an array-type
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`transducer having multiple elements arranged in some type of array for use in
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`phased-array beam steering).” (Emphasis added.) The Applicant continued, stating:
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`It will be understood, of course, that the recitation of a “single linear
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`downscan transducer element” does not require the single element to
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`be a monolithic structure formed of a singl