Paper No.18
`Trials@uspto.gov
`571-272-7822
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`Date Entered: January 24, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MACAUTO U.S.A.
`Petitioner
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`v.
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`BOS GMBH & KG
`Patent Owner
`____________
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`Case IPR2012-00004 (TLG)
`Patent 6,422,291 B1
`____________
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`Before HOWARD B. BLANKENSHIP, THOMAS L. GIANNETTI, and BRIAN
`J. MCNAMARA, Administrative Patent Judges.
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`GIANNETTI, Administrative Patent Judge.
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`DECISION
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`INSTITUTION OF INTER PARTES REVIEW
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`37 C.F.R. § 42.108
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`Yamaha Corporation of America Exhibit 1006 Page 1
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`IPR2012-00004
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`I. BACKGROUND
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`Petitioner Macauto U.S.A. (“Macauto US”) requests inter partes review of
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`claims 1-21 of US Patent 6,422,291 B1 pursuant to 35 U.S.C. §§ 311 et seq. The
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`Patent Owner, BOS GmbH & KG (“BOS”), submitted a preliminary response
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`under 37 C.F.R. § 42.107(b) on December 26, 2012. Paper No. 17. We have
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`jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides as follows:
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`THRESHOLD -- The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
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`Petitioner challenges claims 1-21 as obvious (35 U.S.C. § 103). We grant
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`the petition as to claims 1-5 and 8-21 and deny the petition as to claims 6 and 7.
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`A. The ʼ291 Patent (EX 1001)
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`The technology of the patent is a roll-up blind especially designed for
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`mounting on the rear window of an automobile. Such roller blinds typically have a
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`roll-up blind material having one edge fixed to a windup shaft disposed below an
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`outlet slot in a hat deposit (shelf) area below the rear window of the automobile,
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`and an opposite edge fixed to a pull rod that can be moved from a retracted (reeled-
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`in) position overlying or within the outlet slot, and an extended (reeled-out)
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`2
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`Yamaha Corporation of America Exhibit 1006 Page 2
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`IPR2012-00004
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`position which draws the blind material through the outlet slot to a position
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`overlying the window. The windup shaft is typically pre-stressed in a reeled-in
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`direction by a spring motor. Col. 1, ll.19-27. The blind in its reeled-out state is
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`illustrated in Fig. 1 of the patent reproduced below:
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`Yamaha Corporation of America Exhibit 1006 Page 3
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`Figure 1 shows the blind material web (12) with one edge attached to the
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`winding shaft (8) and the other edge (14), parallel thereto, attached to the pull rod,
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`shown in Fig. 1 and labeled (13) in Fig. 2. The pull rod is provided with guide
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`elements (41) in the vicinity of the ends. This is so the pull rod, when pressed
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`against the inner side of the window pane, will not damage the heating wires.
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`Col. 3, ll. 44-48; 5, ll. 3-10. The guide elements (e.g., wheels) are movable, and in
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`one position stand over the outer contour of head strip (25) of pull rod 13 (Fig. 2),
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`while in the other position they are drawn back with respect to the outer contour.
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`This is further illustrated in Figs. 3-5 reproduced below, showing the guide
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`element position as the blind is reeled in and out:
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`4
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`Yamaha Corporation of America Exhibit 1006 Page 4
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`In the reeled-in state (Fig. 5), pull rod (13) rests with the edges of its cover
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`strip (25) resting on the hat deposit (rear shelf) area, thus closing outer slot (7)
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`which it overhangs with the cover strip. As the blind rolls out, bending spring (52)
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`moves the axle (49) of guide roller (41) into the position of Fig. 4, i.e., into the
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`transition area of the two branches of guide slot (44). As soon as the guide roller
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`(41) with its circumferential surface (48) has become completely free from the slot
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`edge (22), the bending spring (52) will move the axle (49) downward in direction
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`5
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`Yamaha Corporation of America Exhibit 1006 Page 5
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`to the lower end (47) of vertical branch (46) of guide channel (44). See Fig. 3;
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`col.6, ll.28-34. In an alternative embodiment the guide elements are skids instead
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`of wheels. See Fig. 6; col.7, ll.12-16.
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`B. Illustrative Claim
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`Claim 1 of the ʼ291 patent (the only independent claim) illustrates the
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`claimed subject matter:
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`1. A roll-up window blind for a window of a motor vehicle, the
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`window having an associated window pane, the roll-up blind comprising:
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`a rotatable winding shaft,
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`a blind material having parallel first and second edges with the first
`edge being connected to the winding shaft for movement between
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`a reeled-in position and a reeled-out position,
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`a first drive arrangement which pre-stresses the winding shaft in a
`direction corresponding to moving the blind material to the reeled-in
`position,
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`a pull rod fastened to the second edge of the blind material,
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`at least one deflection-resistant actuating element for transferring an
`associated second drive arrangement between a first position in
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`which the pullrod [sic] is disposed adjacent the winding shaft and a second
`position in which the pullrod is disposed relatively further away from
`the winding shaft, and
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`two guide elements for guiding the pull rod on the window pane, the
`guide elements being disposed in spaced relation to each other and being
`supported on the pull rod by corresponding bearing arrangements for
`movement between a first retracted position and a second guide position,
`wherein in the first retracted position the guide elements are retracted
`with respect to a circumferential surface of the pullrod and in the second
`guide position the guide element [sic] project beyond the circumferential
`surface of the pullrod in order to guide the pull rod on the window pane as
`the blind material moves from the reeled-in position to the reeled-out
`position.
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`C. Prior Proceedings
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`6
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`Yamaha Corporation of America Exhibit 1006 Page 6
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`IPR2012-00004
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`1. Petitioner filed a request for ex parte reexamination of the ʼ291 patent on
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`July 9, 2011. Pet.1.1 The request was granted on August 3, 2011 as Ex Parte
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`Reexamination Control Number 90/011,790. Id. On April 10, 2012, the USPTO
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`issued an Ex Parte Reexamination Certificate confirming the patentability of
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`claims 1-21 of the ʼ291 patent.
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`Petitioner contends that the Reexamination Examiner failed to utilize the
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`closest prior art, Ament US Patent 4,836,263. Pet. 1; EX 1002. The Ament patent
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`and the ʼ291 patent are commonly owned by BOS, and according to Petitioner
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`Ament “covers a substantial portion of the limitations of the ʼ291 patent.” Pet. 1-2.
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`Petitioner contends that the Declaration of Gerald Zimmerman (EX1003),
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`submitted by BOS under 37 C.F.R. § 1.132 to address secondary indicia of
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`obviousness, was “biased,” and that the Reexamination Examiner failed properly
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`to analyze the Declaration of Timothy M. Hicks (EX1004), submitted also by
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`BOS. Pet. 1-3.
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`Patent Owner contends that the Petition relies on the same arguments and
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`prior art that the PTO previously considered and should be denied for this reason,
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`among others. P.Resp. 16.2 In support of this Patent Owner relies on 35 U.S.C.
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`§ 325(d), specifically: “In determining whether to institute or order a proceeding
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`under … chapter 31 [Inter Partes Review] … the Director may take into account
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`whether, and reject the petition or request because, the same or substantially the
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`same prior art or arguments previously were presented to the Office.” (Emphasis
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`added.) Id. at 17.
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`1 “Pet.” refers to the Amended Petition for Inter Partes Review of U.S. Patent No.
`6,422,291 (Paper No. 5).
`2 “P.Resp.” refers to Patent Owner’s Preliminary Response to the Amended Petition
`(Paper No. 17).
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`7
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`Yamaha Corporation of America Exhibit 1006 Page 7
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`2. On April 7, 2011, BOS filed an action for infringement of the ʼ291 patent
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`against Petitoner’s Taiwanese parent, Macauto Industrial Co., Ltd. (“Macauto
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`Taiwan”) in the Northern District of Illinois. BOS GmbH & Co. KG v. Macauto
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`Industrial Co., Ltd., Case No. 1:11-CV-02363 (N.D. Ill.). Ex. 2003; P.Resp. 3.
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`BOS claims the complaint was delivered to Macauto Taiwan no later than May 13,
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`2011. Ex. 2004; Id. at 4. Macauto Taiwan moved to dismiss the action for lack of
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`personal jurisdiction. Id. Subsequently the action was dismissed without prejudice
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`pursuant to a stipulation. EX 2016; P.Resp. 4. Patent Owner contends that this
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`previous action, which was not disclosed by Petitioner, is a statutory bar under 35
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`U.S.C. § 315(b). P.Resp. 6-15.
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`3. On May 30, 2012, BOS filed an action for infringement of the ʼ291 patent
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`against Macauto US and Kunshan Macauto (“Macauto China”) in the Western
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`District of New York. BOS GmbH v. Macauto USA, Inc. and Kunshan Macauto,
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`Civil Action No. 6:12-cv-06294 (W.D.N.Y). ). Ex. 2006; P.Resp. 4-5 Depositions
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`in that action have been stayed pending a decision on this petition. P.Resp. 5.
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`D. Claim Construction
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`As a step in our analysis for determining whether to institute a trial, we
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`determine the meaning of the claims. Consistent with the statute and the
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`legislative history of the AIA, the Board will interpret claims using the broadest
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`reasonable construction. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48766 (Aug. 14, 2012); 37 CFR § 100(b). There is a “heavy presumption”
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`that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). By “plain meaning” we
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`refer to the ordinary and customary meaning the term would have to a person of
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`8
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`Yamaha Corporation of America Exhibit 1006 Page 8
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`ordinary skill in the art. Such terms have been held to require no construction.
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`E.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
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`249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of
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`“melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380
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`(Fed. Cir. 2001) (finding no error in court’s refusal to construe “irrigating” and
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`“frictional heat”).
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`Petitioner relies principally on the claim charts provided with the Petition (at
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`pp. 40-60) to provide the required construction of the claim language. Pet. 5-6
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`(“Claim construction is indicated in the attached claim chart. Where not specified,
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`claims are construed according to their ordinary meaning”). The claim charts, in a
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`separate column, purport to provide a “construction” for each claim element.
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`However, in all cases the construction is merely a paraphrase of the claim language
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`itself. With one exception, Petitioner has provided no basis for a construction
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`other than plain and ordinary meaning.
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`That exception is the term “circumferential surface” appearing in all claims.
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`Pet. 8. Citing an on-line dictionary definition (EX 1008), Petitioner contends that
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`the broadest reasonable interpretation for that term should be “of, at, or near the
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`circumference; surrounding.” Id. As Petitioner’s construction of “circumferential
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`surface” does not appear unreasonable at this stage of the proceeding, and is not
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`challenged by Patent Owner, we adopt it. For the other claim terms, as Petitioner
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`has requested we apply the plain and ordinary meaning to a person of ordinary skill
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`in the art.
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`E. Prior Art
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`Petitioner relies on the following prior art:
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`Ament
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`US 4,836,263
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`June 6, 1989
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`EX 1002
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`Nagase
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`JP H9-207565
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`Aug. 12, 1997
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`EX 1019
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`Yamaha Corporation of America Exhibit 1006 Page 9
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`IPR2012-00004
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` Naruse
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`JP H10-24734
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`Jan. 27, 1998
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`EX 1020
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`Nishiwaki
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`JP S54-144521 March 30, 1978 EX 1005
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`Knowles US 4,254,850
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`March 10, 1981 EX 1006
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`Burdick
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`US 3,829,116
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`Aug. 13, 1974
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`EX 1007
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`Koike
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`JP S58-20515
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`Feb. 7, 1983
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`EX 1009
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`Zweigart DE 42 02 081
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`Nov. 3, 1993
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`EX 1021
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`Blondin
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`FR 614,687A
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`Sept. 21, 1926
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`EX 1022
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`In addition, Petitioner cites the following references (EX 1010-18) as
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`evidence of the level of ordinary skill in the art: US Patent 2,183,105;
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`US Patent 3,402,802; China Patent Publication No. CN 2142030Y;
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`GB Patent 424,204; US Patent 2,779,049; US Patent 3,705,731; US
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`Patent 5,119,872; US Patent 2,196,946; and US Patent 3,057,636. See Pet. 10-11.
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`As Petitioner provides no analysis of these references in relation to the elements of
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`the claims, we do not consider them further. See 37 C.F.R. § 42.104(b)(4).
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`1. Ament (EX 1002)
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`Ament and the ʼ291 patent are commonly assigned to BOS. Ament’s
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`German counterpart is cited in the ʼ291 patent’s Background of the Invention.
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`Col. 1, l.19. 3 Ament describes the basic roll-up blind structure of the ʼ291 patent
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`claims with the exception of the guide elements. Fig. 1 of Ament below shows
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`such a window shade:
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`3 Patent Owner incorrectly identifies this reference as the German counterpart of
`Cherng (US 5,752,560). See P.Resp. at p.21 n.2.
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`2. Nagase and Naruse (EX 1019-20)
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`These references are similar to Ament insofar as they disclose automotive
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`window shade systems that operate between an extended position to a closed
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`position by means of a pull rod and an electric winding mechanism. Unlike
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`Ament, however, both teach guide rollers that contact the inside of the rear
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`window. According to Petitioner, Nagase teaches each element of claim 1 except
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`the specific location of the retracting guides. Pet.14. Petitioner recognizes also
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`that while Nagase does disclose guide rollers, the reference does not teach the
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`retractable guides recited of claim 1. Id. at 16. See Fig. 6 of Nagase below, which
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`shows guide roller (68) rotating along rear window glass (14):
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`Likewise Petitioner contends that Naruse meets every element of claim 1
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`except for the specific type of retracting guide claimed. Id. at 21. The Petitioner
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`cites Naruse’s teaching of guide rollers (28) protruding from the circumferential
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`surface of stay (5). These are shown in Fig. 3, reproduced below. See also Naruse
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`p.5, ll.48-51.
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`3. Nishiwaki and Koike (EX 1005, EX1009)
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`Nishiwaki relates to preventing vibration of window glass in an automobile.
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`The reference describes a roller that engages the window and is pressed against the
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`glass by a spring. The roller is shown in Fig. 2 of Nishiwaki, reproduced below:
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`The roller 4 can freely rotate with its shaft 4a being installed at either end in
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`elongated hole or slot 5a of holder 5. The shaft can move in the direction of
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`vibration of the window glass 1 (not shown in Fig. 2) perpendicular to the plane of
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`the window, in slot 5a. Roller 4 is pressed toward and against the surface of the
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`window glass by spring 6, one end of which is mounted on holder 5. Nishiwacki
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`p.1, l.50-p.2, l.5.
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`Koike is similar in purpose to Nishiwacki (preventing vibration of window
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`glass) and in one embodiment (Figs. 3 and 4) has a movable arm 21 and a roller 22
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`disposed on the distal end thereof. The arm is rotatably attached to the inner door.
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`A leaf spring 23 presses against one end of the movable arm 21 and the distal roller
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`22 comes into contact with the door glass face. Col. 4, ll. 32-43.
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`4. Knowles, Burdick (EX 1006-07)
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`These references are grouped together by Petitioner and are cited as teaching
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`retractable wheels. Pet.5. Knowles, for example, describes a suitcase having
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`extensible wheels that move out when the handle is extended but return to the
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`storage position when the handle is retracted. Col.1, ll. 23-26. Burdick describes
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`collapsible wheels for an air cushion transporter that retract within a housing when
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`not in use. Col.1, ll.26-53.
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`5. Zweigart and Blondin (EX 1021-22)
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`Zweigart describes a roll-up window blind for an automobile that is installed
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`under the hat shelf having a slot that is completely covered by a flap held in a
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`closed position by s spring. Col. 2, ll. 18-21.
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`Blondin describes a “jack” having foldable wheels for moving trunks
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`wherein the swing axis for folding the wheels extends at right angles to the lower
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`edge of the device. See Blondin Fig. 2; cf. ʼ291 patent, claim 17, Figs. 7-9.
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`II. ANALYSIS
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`A. Statutory Bar
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`A threshold issue is Patent Owner’s contention that Petitioner is barred from
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`pursuing inter partes review under 35 U.S.C. § 315(b), which provides as follows:
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`An inter partes review may not be instituted if the petition
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`requesting the proceeding is filed more than one year after the date on
`which the petitioner, real party in interest, or privy of the petitioner is
`served with a complaint alleging infringement of the patent.
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`14
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`Yamaha Corporation of America Exhibit 1006 Page 14
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`According to Patent Owner, a complaint charging infringement of the ʼ291 patent
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`was served on Macauto Taiwan, Petitioner’s parent, “on or by” May 13, 2011.
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`P.Resp. 7. Patent Owner further contends that the above statute is applicable
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`because Macauto Taiwan (not Macauto US) is the real party in interest here, and is
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`in any event a privy of Petitioner as required by the statute. Id. at 7-12. We
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`disagree that Patent Owner has adequately demonstrated that the statutory bar is
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`applicable.
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`The statute requires that the service date of the complaint be more than a
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`year before the petition was filed. Patent Owner has not established that this is the
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`case. In making this determination the Board looks to the Federal Rules of Civil
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`Procedure.
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`As to the requirement of service, the Board notes that the infringement suit
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`against Macauto Taiwan was voluntarily dismissed without prejudice under
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`Fed.R.Civ.P. 41(a), pursuant to a joint stipulation. EX 2016. The Federal Circuit
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`has consistently interpreted the effect of such dismissals as leaving the parties as
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`though the action had never been brought. Graves v. Principi, 294 F.3d 1350,
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`1356 (Fed. Cir. 2002) (“The dismissal of an action without prejudice leaves the
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`parties as though the action had never been brought”); Bonneville Associates, Ltd.
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`Partnership v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999) (“The rule in the
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`federal courts is that ‘[t]he effect of a voluntary dismissal without prejudice
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`pursuant to Rule 41(a) is to render the proceedings a nullity and leave the parties as
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`if the action had never been brought.’”) (Citations and internal quotes omitted.)
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`Accord, Wright, Miller, Kane, and Marcus, 9 Federal Prac. & Proc. Civ. § 2367
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`(3d. ed.) (“[A]s numerous federal courts have made clear, a voluntary dismissal
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`without prejudice under Rule 41(a) leaves the situation as if the action never had
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`been filed.”) (footnote omitted). Accordingly, the dismissal of the earlier action
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`against Macauto Taiwan nullifies the effect of the alleged service of the complaint
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`on Petitioner.
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`As to the date of the alleged service, Macauto apparently signed and
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`returned a waiver of service under Fed.R.Civ.P. 4(d). EX 2004. Under
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`subdivision (d)(4) of that Rule, to establish a service date the waiver or proof of
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`service must be filed. There is no evidence in the record or otherwise that Patent
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`Owner has done so.4 As explained in the Advisory Committee Note to Rule 4(d),
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`“Paragraph (4) clarifies the effective date of service when service is waived; the
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`provision is needed to resolve an issue arising when applicable law requires service
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`to toll the statute of limitations.” Advisory Committee Note to 1993 Amendment
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`to Rule 4(d) (citations omitted). The Advisory Committee Note further makes it
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`clear that the act of waiving service under Rule 4(d) was not intended to effect
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`service: “It is hoped that, since transmission of the notice and waiver forms is a
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`private nonjudicial act, does not purport to effect service, and is not accompanied
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`by any summons or directive from a court, use of the procedure will not offend
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`foreign sovereignties …” As Patent Owner has not demonstrated that a service
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`waiver (EX 2004) or other proof of service was ever filed, we conclude that it has
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`not established a service date under the statute.
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`In view of our conclusion that for two separate, independent reasons there
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`was no effective service date of the prior complaint on Petitioner, we do not reach
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`the issues relating to real party in interest or privity raised by Patent Owner.
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`B. Effect of the Reexamination
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`Under 35 U.S.C. § 325(d), “the Director may … reject the petition or request
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`because, the same or substantially the same prior art or arguments previously were
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`4 A check of the docket entries on PACER turned up no such filing.
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`Yamaha Corporation of America Exhibit 1006 Page 16
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`IPR2012-00004
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`presented to the Office.” Patent Owner contends that the Petition should be denied
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`here because the same arguments and prior art were before the Office previously in
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`an ex parte reexamination. P.Resp. 15-17. Consistent with the statute we have
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`reviewed the record in the prior proceeding.
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` Of the art cited in the Petition, only Ament, Knowles, and Koike were
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`considered in the reexamination. See Information Disclosure Statement dated
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`7/27/11 in Ex Parte Reexamination 90/011,790; ex 3001. The reexamination
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`focused on patents to Cherng (supra), Knowles (supra), and Jeuffray (US
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`5,067,546), and the Examiner’s obviousness rejections of claims 1-5 and 8-21 were
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`overcome by the submission of a response including declarations from an engineer,
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`Timothy M. Hicks (EX1004), and a BOS managing director, Gerald Zimmerman
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`(EX1003), on December 28, 2011. The Examiner in the reexamination found the
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`arguments in those declarations “persuasive.” See Notice of Intent to Issue Ex
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`Parte Reexamination Certificate mailed February 28, 2012 in Ex Parte
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`Reexamination 90/011,790; ex 3002.
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`We have reviewed the declarations and agree with Petitioner that they
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`should not have been given determinative weight by the Examiner. Turning first
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`to the Hicks declaration, we disagree with the conclusion that Knowles is not
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`relevant art to the ʼ291 patent. Hicks Decl. ¶14. This contention is repeated by
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`Patent Owner in the Preliminary Response, pp. 22-24. The test for analogous art
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`includes whether the art is in the inventor’s field of endeavor or is reasonably
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`pertinent to the problem which the inventor was concerned. See In re ICON
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`Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 1374) (“Nothing about
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`Icon’s folding mechanism requires any particular focus on treadmills; it generally
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`addresses problems of supporting the weight of such a mechanism and providing a
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`stable resting position.”); also see Wyers v. Master Lock Co., 616 F.3d 1231, 1238
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`(Fed. Cir. 1020); Tokai Corp. v. Easton Enter., Inc., 632 F.3d 1358, 1371 (Fed.
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`Cir. 2011); Innovention Toys, LLC v. MGA Enter., Inc., 637 F.3d 1314, 1321-11
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`(Fed. Cir. 2011). From the background of the ʼ291 patent we conclude that the
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`problem addressed was retracting the guide wheels “so that in the reeling-in they
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`can plunge through the outer slot.” ʼ291 patent col. 1, ll. 54-59. We conclude that
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`Knowles is analogous art because it is directed to a similar problem of retracting
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`the wheels of a piece of luggage to make it more compact for storage.
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`We further disagree with the Hicks analysis in that it attacks references
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`individually when the rejection was based on the combination. See Hicks Decl. at
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`¶13, attacking Cherng for not teaching retracting wheels, and at ¶14, attacking
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`Knowles for not teaching window blinds. Finally, we disagree with the Hicks
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`approach of hypothesizing that a “complete[] redesign” of Cherng (a rationale that
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`was adopted in part by the Examiner) would be required to add retractable wheels.
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`See id. ¶ 16; compare Examiner’s “Statement of Reasons for Patentability And/Or
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`Confirmation,” supra at p. 2. “The test for obviousness is not whether the features
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`of a secondary reference may be bodily incorporated into the structure of the
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`primary reference . . . . Rather, the test is what the combined teachings of those
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`references would have suggested to those of ordinary skill in the art.” In re Keller,
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`642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed.
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`Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically
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`combinable to render obvious the invention under review.”); and In re Nievelt, 482
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`F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not
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`involve an ability to combine their specific structures.”). Rather, “if a technique
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`has been used to improve one device, and a person of ordinary skill in the art
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`would recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill.” KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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`The Zimmerman Declaration, which purports to demonstrate commercial
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`success, is unpersuasive chiefly for its failure to establish a nexus between the
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`alleged “value” to car makers or the commercial sales and the claimed invention.
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`See, e.g., Tokai Corp., supra, 632 F.3d at 1370 (“Tokai proffered no evidence from
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`which one could reasonably infer a nexus between its sales data and its utility
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`lighters’ automatic-locking features.”)
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`On the other hand, despite an opportunity to do so here, Petitioner has not
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`provided any expert declarations of its own to refute Hicks or Zimmerman. While
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`such declarations might be helpful in determining obviousness they are
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`nevertheless not always a prerequisite. Perfect Web Tech., Inc. v. InfoUSA, Inc.,
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`587 F.3d 1324, 1329 (Fed. Cir. 2009).
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`In summary, we are not required by statute to reject a Petition based upon
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`the fact that certain arguments or art were previously considered by the Office, and
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`after reviewing the reexamination, we decline to do so in this case. See 35 U.S.C.
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`§ 325(d) (quoted supra). The record before us is not the same as that previously
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`before the Office, and we are in any event not persuaded by the declarations
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`previously submitted in the reexamination that apparently determined the outcome.
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`C. Obviousness of Claims 1, 5, 8-16, and 18-20 Over Ament etc.
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`Petitoner’s analysis of this grouping of claims in relation to Ament in
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`combination with Nishiwaki, or Knowles, or Burdick, appears at pages 4-14 of the
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`Petition and in the claim chart appearing at Pet. 40-43. According to Petitioner,
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`those claims would have been obvious over Ament and Nishiwara combined with
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`any one of the additional references. Petitioner contends that Ament teaches every
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`element of claim 1 except for the retractable guides. Pet. 4-5. Petitioner asserts
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`that Ament teaches guide elements that retract from a first extended position away
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`from the hat deposit area to a second retracted position on the hat deposit area of a
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`vehicle, but not into the circumferential surface of the pull rod. Id. at 5. Petitioner
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`asserts that Nishiwaka, Burdick, and Knowles each teach retractable rollers and
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`further meet the “circumferential surface” limitation. Id. at 8.
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`Petitioner contends that it would have been obvious to a person of ordinary
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`skill to combine Nishiwaki’s moveable roller with Ament to create a system where
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`the roller moved into and out of the circumferential surface of the stay, especially
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`because Ament and Nishiwaki both relate to automotive window systems. Pet. 9.
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`Furthermore Knowles teaches retractable wheels in a related art. Id. Thus,
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`according to Petitioner a practitioner searching for a method of hiding or limiting
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`the needed clearance for a guide or wheel would have been motivated to search out
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`other collapsible wheels such as those taught by Knowles. Id. Additionally,
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`Burdick teaches retractable guide wheels in a related art. Id. at 10. Moreover, one
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`of ordinary skill in the art at the time of the invention would have been aware of
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`retractable guide wheels from similar applications in related fields. Id. at 10-11.
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`Patent Owner contends that Ament and Knowles were considered by the
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`Examiner in the reexamination and were rejected. P.Resp. 21. Patent Owner
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`further contends that Ament lacks any appreciation of the claimed invention, and
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`specifically teaches that holding elements (53) in Fig. 1, supra, are fixed to the
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`vehicle body and not movable. Id. at 22. Patent Owner further contends that
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`Knowles is not available as a reference because it is not analogous art.
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`Id. at 22-23.
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`We agree with Patent Owner that Ament lacks any teaching of guide
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`elements as claimed in that Ament’s holding elements (53) are not movable with
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`the shade. In that respect, Ament is less relevant than the Cherng patent (US
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`5,752,650) cited in the reexamination. EX 1002. We do not find this teaching,
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`missing from Ament, in the other art relied on by Petitioner. Nishiwacki and
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`Koike relate to damping vibrations of automobile windows. We agree with Patent
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`Owner they do not teach or suggest retractable rollers on a pull rod, as their rollers
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`are biased for pressing against the pane of glass to stop the glass from rattling.
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`P.Resp. 25-26. Burdick teaches retractable wheels, but for a different purpose.
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`See description supra. We conclude therefore that Petitioner has not demonstrated
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`a reasonable likelihood of prevailing on its obviousness arguments based on Ament
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`in combination with these references.
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`As to Knowles, while we agree with Patent Owner (P.Resp. 23) that the
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`reference does not teach adding roller wheels to a pull rod, we do not agree that the
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`disclosure in Knowles of retracting wheels on luggage is not pertinent to the
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`particular problem which the ʼ291 patent purportedly solves. See discussion supra.
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`As the background of the ʼ291 patent recognizes, the basic structure of the claimed
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`blind with guide elements on the pull rod was already known, as was the use of an
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`outlet slot to receive the blind when it is reeled in. Col. 1, ll. 50-59 (referred to by
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`Patent Owner as “admitted prior art” P.Resp. 27). Most claims, in fact, do not
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`even recite the outlet slot. The claims and the written description instead
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`emphasiz