Paper 65
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`Trials@uspto.gov
`Tel: 571-272-7822 Entered: April 24, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`IPR2016-00034
`Patent 6,973,698 B1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`
`Incorporating Decisions on
`Petitioner’s Motion to Exclude Evidence
`Petitioner’s Motion to Strike
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: April 24, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`_______________
`
`IPR2016-00034
`Patent 6,973,698 B1
`_______________
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`
`Incorporating Decisions on
`Petitioner’s Motion to Exclude Evidence
`Petitioner’s Motion to Strike
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
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`IPR2016-00034
`Patent 6,973,698 B1
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`INTRODUCTION
`I.
`Costco Wholesale Corporation (“Petitioner”) filed a Petition
`requesting inter partes review of claim 1, the sole claim, in U.S. Patent No.
`6,973,698 B1 (Ex. 1001, “the ’698 patent”). Paper 1 (“Pet.”). Robert Bosch
`LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper
`15 (“Prelim. Resp.”). We instituted review on two of the six grounds
`asserted in the Petition. Paper 16 (“Dec. Inst.”). After our Decision on
`Institution, Patent Owner filed a Response (Paper 26, “PO Resp.”), and
`Petitioner filed its Reply (Paper 32, “Pet. Reply”). An oral hearing was held
`January 18, 2017. Paper 63 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`We also address herein the parties’ Motions to Strike and to Exclude
`Evidence.
`As described below, we determine that a preponderance of the
`evidence establishes that claim 1 is unpatentable.
`A. Grounds of Unpatentability1
`Inter partes review was instituted to determine: (1) whether claim 1 of
`the ’698 patent would have been obvious under 35 U.S.C. § 103 in view of
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of §§ 102 and 103.
`2
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`Arai2 and Appel ’7703; and (2) whether claim 1 of the ’698 patent is
`anticipated under 35 U.S.C. § 102(b) based on Swanepoel4.
`B. Related Proceedings
`The parties state that the ’698 patent is asserted in Robert Bosch LLC
`v. Alberee Products Inc. et al., Civil Action No. 12-574-LPS (consolidated
`with Civil Action No. 14-142-LPS), pending in the United States District
`Court for the District of Delaware. Pet. 1; Paper 5, 1. The ’698 also has
`been the subject of several judicial proceedings and an ITC proceeding, each
`of which have been closed or terminated. Pet. 1–2; Paper 5, 1–2.
`Petitioner filed petitions against several of Patent Owner’s other
`patents related to windshield wiper technology, including: U.S. Patent Nos.
`6,836,926 (IPR2016-00035), 6,944,905 (IPR2016-00036), 6,292,974
`(IPR2016-00038), 7,228,588 (IPR2016-00039), 7,484,264 (IPR2016-
`00040), 8,099,823 (IPR 2016-00041), and 8,544,136 (IPR2016-00042). Pet.
`1; Paper 5, 1. The petition in IPR2016-00035 was denied. Trial was
`instituted in the other listed cases. A single, consolidated hearing was held
`for this case and the other listed cases.
`C. The ’698 Patent
`The back and forth action of windshield wipers clearing a vehicle
`windshield can produce noise that is disturbing to the driver and passengers.
`According to the Specification, the “abrupt flipping over” of the wiper lip
`
`
`
`2 U.S. Pat. No. 4,807,326, issued February 28, 1989 (“Arai”) (Ex. 1004).
`3 U.S. Pat. No. 4,028,770, issued June 14, 1972 (“Appel ’770”) (Ex. 1006).
`4 U.S. Pat. No. 5,325,564, issued July 5, 1994 (“Swanepoel”) (Ex. 1009).
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`“produces undesirable knocking noises.” Ex. 1001, col. 1, ll. 47–50. The
`disclosed wiper blade addresses this problem.
`In the disclosed wiper blade, in order to “produce as low noise as
`possible” (id. at col. 4, l. 6), the contact force between the wiper blade and
`the windshield is less in at least one of the end sections of the blade than at
`the center of the blade (id. at col. 1, ll. 60–62; col. 4, ll. 8–12). The ’698
`patent recognizes that this “fundamental concept” (id. at col. 4, l. 13) can be
`implemented in various ways. For example, the center region of the blade
`may have “a virtually uniform contact force” that “sharply decreases” at
`both end sections of the wiper blade. Id. at col. 4, ll. 16–20; see also col. 4,
`ll. 27–29 (disclosing a contact force “of a uniform magnitude” until it
`“decreases sharply” at one end region). Another alternative is an
`“essentially uniform” force in the center region that “decreases slightly”
`toward one end and “decreases considerably in the vicinity of” the other end.
`These disclosed different designs all have uniform force over most of the
`blade. The different designs of the blade depend on the different “spherical
`curvatures” of windshields. Id. at col. 4, ll. 46–49. As succinctly
`summarized by Patent Owner, “the key to this is that we have the end
`sections and the center sections and the pressure in one end section is less
`than the pressure in the center section.” Tr. 47, ll. 8–10.
`In the context of a specific embodiment, the ’698 patent discloses a
`wiper blade, shown below in Figure 1.
`
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`Figure 1 of the ’698 patent showing a perspective view
` of a wiper blade connected to a wiper arm
`The wiper blade includes wiper strip 14 carried by carrying element
`12. Wiper strip 14 includes wiper lip 28. Carrying element 12 distributes
`the contact force (shown by arrow 24) of wiper lip 28 against window
`surface 26 over the entire length of the wiper strip. Ex. 1001, col. 3, ll. 27–
`29.
`
`To address the noise issue, carrying element 12, used for distributing
`the contact force, is designed so that the contact force of the wiper strip
`against the windshield surface is greater in the center section of the wiper
`strip than in its end sections. As explained in the Specification, and as
`shown in Figures 2 and 8, carrying element 12 used for distributing the
`contact force (arrow 24, Fig. 2) is designed so that the contact force of the
`wiper strip 24 or the wiper lip 28 against the window surface 26 is greater in
`its center section 36 (Fig. 8) than in at least one of the two end sections 38.
`Id. at col. 4, ll. 6–12. The reduced contact force at the end sections results in
`a steeper drag position of the wiper lip (see Fig. 4 below) in comparison to
`the center region with the greater contact force (see Fig. 3 below – note
`compressed lip 28). Id. at col. 1, ll. 62–65.
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`Figure 3 is a sectional view
`near the center of wiper strip 14
`
`Figure 4 is a sectional view
`near the end of wiper strip 14
`
`According to the Specification, the reduced contact force at the end
`sections, resulting in a steeper position of the wiper lip, shown in Figure 4,
`“encourages its tilting-over process in the wiping direction reversal positions
`of the wiper blade.” Id. at col. 1, l. 65–col. 2, l. 1; col. 5, ll. 3–18. This
`prevents the abrupt snapping over of the entire wiper lip and the “unpleasant
`knocking noise connected with it.” Id. at col. 2, ll. 2–4. The Specification
`explains that “[i]t is particularly advantageous if the contact pressure of the
`wiper strip against the window is lower at its two end sections than in its
`center section because the tilting-over process of the wiper lip then takes
`place starting from both ends and is therefore finished more quickly.” Id. at
`col. 2, ll. 11–15. The Specification also states that matching the carrying
`element stress to the desired pressure distribution “is problematic in the case
`of spherically curved windows.” Id. at col. 1, ll. 50–53.
`To provide the desired pressure distribution, as shown generally in
`Figures 2 and 8, carrying element 12, when unloaded, has a sharper concave
`curvature than the window in the region of the wiping field being swept by
`
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`the wiper blade. The curvature is sharper in the center section 36 of the
`carrying element than at its end sections 38. Id. at col. 4, ll. 50–58.
`D. Illustrative Claim
`The ’698 patent has only one claim, which is reproduced below.5
`1. A wiper blade for a wiping device of a motor vehicle for
`wiping a window of the motor vehicle, comprising
`an elongated wiper strip placeable against the window, and
`an elongated spring-elastic carrying element disposed on a side
`of the wiper strip remote from the window,
`said spring-elastic carrying element extending parallel to
`an axis of elongation of said wiper strip to distribute a contact
`force against the window over an entire length of said wiper strip,
`said wiper strip having a center section and two end
`sections, said contact force of said wiper strip being greater in
`said center section than in at least one of said two end sections,
`said spring-elastic carrying element has on a side thereof
`oriented toward the window a concave curvature that is sharper
`than the sharpest curvature of a spherically curved window in a
`region of a wiping field that can be swept across by said wiper
`blade and
`a concave curvature in said center section of the carrying
`element is sharper than in said sections thereof.
`EVIDENTIARY MOTIONS
`II.
`Before addressing the merits, we first decide several evidentiary
`motions filed by the parties.
`
`
`
`5 Line breaks have been added to claim 1 to assist in identifying the elements
`recited in claim 1.
`
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`A. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude Paragraphs 7, 9–11, 15, 18, 19, 21,
`and 23–26 of the Declaration testimony of Mr. David Peck (Ex. 1100).
`Paper 46. Petitioner offers its opposition (Paper 54), to which Patent Owner
`offers its reply (Paper 60). The Motion to Exclude and associated papers
`have no meaningful distinction from the similar Motion to Exclude
`Mr. Peck’s testimony in IPR2016-00038, slip op. at 19–22, Paper 68 (PTAB
`Mar. 30, 2017). We adopt the findings, analysis, and conclusions from that
`case on this issue. Consequently, Patent Owner’s Motion to Exclude
`portions of Mr. Peck’s Declaration (Ex. 1100) is denied.
`
`B. Petitioner’s Motion to Exclude
`Petitioner moves to exclude the testimony of Wilfried Merkel offered
`by Patent Owner in Exhibit 2005, at pages 210–264. Paper 47, 1–11. This
`testimony is from a 2010 district court trial transcript in Robert Bosch LLC
`v. Pylon Manufacturing Corp., No. 08-542 (D. Del. Apr. 15, 2010), in which
`Mr. Merkel testified on behalf of Patent Owner. Paper 47, 4.
`Petitioner also moves to exclude portions of the Declaration testimony
`of Martin Kashnowski offered by Patent Owner in Exhibit 2007. Paper 47,
`11–14.
`Patent Owner offers its opposition (Paper 57), to which Petitioner
`offers its reply (Paper 61).
`With respect to the testimony of Mr. Merkel, our analysis in IPR2016-
`00039, slip op. at 5–6, Paper 69 (PTAB Mar. 30, 2017) is applicable here
`because the ’698 patent was not involved in the Pylon litigation. We adopt
`
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`the findings, analysis, and conclusions from that case on this issue.
`Consequently, Patent Owner’s Motion to Exclude portions of Mr. Merkel’s
`prior trial testimony (Ex. 2005) is granted.
`With respect to the testimony of Mr. Kashnowski, our analysis in
`IPR2016-00038, slip op. 16–19, Paper 68 is applicable here. We adopt the
`findings, analysis, and conclusions from that case on this issue.
`Consequently, Petitioner has not demonstrated effectively that the testimony
`at issue is inadmissible hearsay, and with respect to this evidence, the
`Motion to Exclude is denied.
`
`C. Petitioner’s Motion to Strike
`Petitioner moves to strike the testimony of Mr. Merkel in Exhibit
`2005, at pages 210–264. Paper 31. This testimony is from a 2010 district
`court trial transcript in Robert Bosch LLC v. Pylon Manufacturing Corp.,
`No. 08-542 (D. Del. Apr. 15, 2010), in which Mr. Merkel testified on behalf
`of Patent Owner. Paper 31, 1. Patent Owner filed an opposition. Paper 34.
`Petitioner’s Motion to Strike and associated papers do not differ from the
`similar Motion to Strike in IPR2016-00038, slip op. at 4–10, Paper 68
`(PTAB Mar. 30, 2017). We adopt the findings, analysis, and conclusions
`from that case on this issue. Consequently, Patent Owner’s Motion to Strike
`portions of Mr. Merkel’s prior trial testimony (Ex. 2005) is denied.
`ANALYSIS
`III.
`A. Claim Construction
`When interpreting a claim, words of the claim generally are given
`their ordinary and accustomed meaning, unless it appears from the
`
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`specification, the file history, or other evidence asserted by the parties that
`the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. Id.
`“Petitioner asserts that none of the claim terms in the [’698] patent
`need to be construed for purposes of this petition.” Pet. 13. Patent Owner
`does not address claim interpretation in its Response. We agree with the
`parties. For purposes of this Decision, claim 1 does not require specific
`construction.
`
`B. Prosecution History
`The prosecution of the application that matured into the ’698 patent
`was extensive, including an appeal of the Examiner’s rejections to our
`predecessor, the Board of Appeals and Interferences. Ex. 1002, 289–298.
`As explained below, patent claim 1, challenged in this inter partes review
`proceeding, is a combination of application claims 9 and 12, and is
`substantively similar to application claim 8.
`In the Final Office Action, application claims 5–7, 9–11, 13, and 14
`were rejected under 35 U.S.C. § 102(b) as anticipated by Arai. Id. at 204.
`Application claims 9–14 were rejected under 35 U.S.C. § 102(b) as
`anticipated by Appel ’770 “as evidenced by Arai.” Id. at 205. Application
`claim 8, dependent from claim 5, was rejected under 35 U.S.C. § 103(a) as
`unpatentable based on Arai and Appel ’770. Id. at 206. Appel ’770 and
`Arai are the same references asserted by Petitioner in its Petition. Applicant
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`appealed the final rejection of application claims 5–14. Ex. 1002, 249.6
`Application claims 5, 9, and 14 were independent claims. Id. at 262–265.
`On appeal, the Board affirmed the rejection of application claims 5–7,
`9–11, and 14 as anticipated by Arai (id. at 295); affirmed the rejection of
`application claim 8 under § 103 based on Arai and Appel ’770 (id. at 296);
`and reversed the rejection of application claims 9–12 and 14 as anticipated
`by Appel ’770 “as evidenced by Arai” (id. at 295).
`With respect to the reversal of application claims 9–12 and 14, the
`Board determined that claims 9–12 and 14 were not anticipated by Appel
`’770 because the Examiner relied on Arai Figure 8 to establish that “the
`contact pressure in the center of the [Appel ’770] blade would be greater
`than ends sections.” Id. at 295.7 The Board determined there was no
`disclosure of the structure of the prior art wiper blade represented in Arai
`Figure 8. Id. As the Board explained, the pressure distribution curves in
`Arai Figure 8 are described as being based on a “prior art wiperblade” for
`which the reference provides no disclosure of the structure of the prior art
`article. Id. at 293 n.5.
`Thus, the result of the various affirmances and reversals was that
`application claim 12 was the sole claim remaining in the application.
`
`
`6 Application claim 13 was cancelled, however, and thus was not involved in
`the appeal. Ex. 1002, 258.
`
`7 The Board stated that “[w]hile it is entirely appropriate to rely on another
`reference to clarify a fact in the anticipating reference, . . . the supporting
`reference must in fact accomplish that purpose.” Id. at 295.
`
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`Application claim 12 was replaced by new application claim 15 (id. at 301–
`305). Applicant stated that “[c]laim 15 combines the features of original
`claims 9 and 12,” and argued that “since claim 12 was indicated as allowable
`by the Board of Appeals and Patent Interferences it is believed that claim 15
`should be allowed.” Id. at 304.8 Application claim 15 was allowed (id. at
`314) and became claim 1 of the ’698 patent (id. at 3 (index of claims)).
`The Board did not have before it any rejection of application claim 12
`under § 103 based on Arai combined with Appel ’770 or based on the other
`references asserted by Petitioner.
`C. Grounds of Unpatentability
`1. Obviousness Based on Arai and Appel ’770 (Petitioner’s “Ground #1”)
`Petitioner contends that claim 1 would have been obvious to one of
`ordinary skill in the art based on Arai and Appel ’770. Pet. 3, 29–40.
`Petitioner also relies on the Declaration testimony of Gregory W. Davis,
`Ph.D. (Ex. 1013).
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`
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`8 The Board reversed the rejection of application claim 12. The Board did
`not comment on whether claim 12 was “allowable.” See In re Voss, 557
`F.2d 812, 816 n.11 (CCPA 1977) (“reversal is not a mandate to the PTO to
`issue a patent and does not preclude the PTO from reopening prosecution”)
`(citing In re Borkowski, 505 F.2d 713, 718 (CCPA 1974) (the Board may not
`force the granting of patents on inventions that do not comply with the
`statutes).
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`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when available, secondary considerations, such as
`commercial success, long felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550 U.S. at
`407 (“While the sequence of these questions might be reordered in any
`particular case, the [Graham] factors continue to define the inquiry that
`controls.”).
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally
`requires that a person of ordinary skill at the time of the invention “would
`have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
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`Moreover, in 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. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`§ 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham,
`is but an aid in reaching the ultimate determination of whether the claimed
`invention as a whole would have been obvious.”) (citation omitted).
`“A reference must be considered for everything it teaches by way of
`technology and is not limited to the particular invention it is describing and
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`907 (Fed. Cir. 1985).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`“recourse to common sense” or to that which the prior art teaches. Id.
`Against this general background, we consider the references, other
`evidence, and arguments on which the parties rely.
`a Scope and Content of the Prior Art
`i. Arai, Ex. 1004
`In affirming the Examiner’s rejections, the Board stated:
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`The examiner submits, and we agree, that as a matter of fact,
`prima facie, the wiper device and wiper blade taught by Arai
`anticipate the claimed wiper device encompassed by appealed
`claim 5 and the claimed wiper blade encompassed by appealed
`claim 9 and appealed claim 14, because each and every element
`arranged as required for the claimed articles encompassed by
`each of these appealed claims is shown in Arai.
`Ex. 1002, 292 (emphasis added). For purposes of this Decision, we agree
`with and adopt the Board’s prior determination.
`Thus, based on the Board’s prior determination that Arai anticipates
`application claim 9, Arai discloses the following structure:
`9. A wiper blade for a wiping device of a motor vehicle for
`wiping a window of the motor vehicle, comprising an elongated
`wiper strip placeable against the window, and an elongated
`spring-elastic carrying element disposed on a side of the wiper
`strip remote from the window, said spring-elastic carrying
`element extending parallel to an axis of elongation of said wiper
`strip to distribute a contact force against the window over an
`entire length of said wiper strip, said wiper strip having a center
`section and two end sections, such that a contact force of said
`wiper strip would be greater in said center section than in at least
`one of said two end sections.
`Ex. 1002, 263–264.
`Figure 5 of Arai is shown below.
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`
`Figure 5 is a side view of the backing member under no load condition.
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`As shown in Figure 5, Arai also discloses that the curvature of
`backing member 3 “is gradually decreased at longitudinally opposite end
`portions 3A and 3A, and the rigidity against bending is large at and adjacent
`to pivot connections 8’ and 9’, and is small at opposite end portions 3A and
`3A and at the central portion 3B.” Ex. 1004, col. 3, ll. 28–33. According to
`Arai, this results in a uniform pressure distribution along the length of the
`blade allowing the wiper blade to “follow a curved windshield.” Id. at
`col. 3, ll. 34–36. Figure 6 of Arai shows an alternative structure “to obtain
`relatively uniform pressure distribution with respect to a wide range between
`a low pressure and a high pressure” along the length of the wiper blade.
`Id. at col. 3, ll. 43–45. Thus, while Arai refers to a uniform pressure
`distribution, Arai recognizes that the pressure along the wiper blade varies
`widely “between a low pressure and a high pressure.” This pressure
`variation is shown in Figure 7.
`Figure 7 shows the change in the pressure distribution at wiping edge
`1A (see Figure 2) of wiper strip 1 when the pressing force applied on the
`wiper-blade from the yoke member so that the wiper strip “contacts with the
`surface of the windshield within a suitable range of inclination angle.”
`Id. at col. 4, ll. 3–5. With respect to pressure distribution, the Board in its
`prior decision also determined that:
`While Arai is interested in applying a uniform pressure along the
`length of the wiper blade with the carrying element disclosed
`therein (col. 3, lines 30-36), we agree with the examiner that the
`high pressure distribution curve showing the pressure applied on
`the wiper blade by the article of Arai in FIG. 7[] (see col. 3, lines
`48-51) demonstrates that, at that pressure, the contact force of the
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`wiper strip is greater in the center section than at both of the end
`sections (see also col. 4, lines 1-8).
`Ex. 1002, 293. For purposes of this Decision, we also agree with and adopt
`this prior analysis of pressure distribution in Arai.
`ii. Appel ’770, Ex. 1005
`Appel ’770 discloses a windshield wiper that is flexibly adaptable to
`efficient wiping of variable curvatures as well as relatively flat portions of
`vehicle windshields. Ex. 1005, col. 1, ll. 11–15. The objective is to
`distribute a centrally applied actuating arm pressure load relatively
`uniformly along the length of the blade throughout variations in windshield
`contour traversed by the wiper. Id. at col. 1, ll. 25–28. The “backbone
`member,” or blade carrying element, has a radius of curvature less than that
`of the windshield. Id. at col. 1, ll. 32–34. The wiper blade, attached to the
`carrying element, has a width and/or thickness varying from a maximum
`near the central arm attachment point to a minimum at the ends. Id. at col. 1,
`ll. 34–37. The width, thickness, and degree of curvature is proportioned
`with the modulus of elasticity, total pressure load, and length of blade to
`provide substantially uniform pressure along the length of contact between
`the wiper blade and the windshield. Id. at col. 1, ll. 37–41.
`Appel ’770 discloses that progressive pressure contact from ends to
`center can be achieved through various constructional approaches
`incorporating progressive dimensional variations in free form curvature,
`width and/or thickness of a carrying element to provide a single spring
`backbone element having uniform pressure loading characteristics when
`pressed against a flat or curved windshield. Id. at col. 3, ll. 9–22; ll. 31–36.
`
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`We find this suggests a wide range of design options to a person of ordinary
`skill. The combination of the flexible wiping blade with the spring
`backbone element determines the final pressure characteristic between the
`wiping blade and the windshield surface. Id. at col. 3, ll. 23–26. Thus, the
`shape and section of the flexible wiping blade also must be taken into
`account with the spring backbone element in determining the proper design
`proportions. Id. at col. 3, ll. 26–30.
`Appel ’770’s disclosure regarding the design analysis for flat
`windshields applies equally to curved windshields. With whatever specific
`constructional form is employed, it may be adapted to also provide
`substantially uniform pressure loading on any given curved windshield
`surface by adding to the free form curvature which produces uniform
`pressure loading on a flat surface the additional curvature of the curved
`windshield surface. Id. at col. 3, ll. 31–36.
`Appel ’770 is an improvement over a prior patent by the same
`inventor, U.S. Patent 3,192,551 (“Appel ’551”). Id. at col. 1, ll. 25–33 (“the
`present invention incorporates significant improvements which provide for
`improved economy of production, operation and assembly” over Appel
`’551). The disclosure of Appel ’551 “is incorporated by reference in the
`description portion of [the Appel ’770] specification.” Id. at col. 3, ll. 18–
`20.
`
`b Level of Ordinary Skill
`Petitioner asserts the references cited in the Petition reflect the level of
`ordinary skill in the relevant technology. Pet 28–29. Petitioner also asserts
`a person of ordinary skill would have had “education and experience in
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`mechanical engineering.” Id. at 29. Petitioner does not cite any authority to
`support its asserted level of ordinary skill. We note, however, that Dr. Davis
`repeats substantially verbatim Petitioner’s asserted level of ordinary skill.
`Ex. 1013 ¶¶ 15, 16.
`Patent Owner asserts that a person of ordinary skill in the art at the
`time of the invention of the ’698 patent would have had either an
`undergraduate degree in mechanical engineering or a similar discipline, or
`several years of experience in the field of wiper blade manufacture and
`design. PO Resp. 1 (citing Ex. 2003 at ¶¶ 16–19). Exhibit 2003 is the
`declaration testimony of Dr. Steven Dubowsky. Among his numerous
`academic credentials and professional experience, Dr. Dubowsky is a
`Professor Emeritus in the Department of Mechanical Engineering and in the
`Department of Aeronautics and Astronautics at the Massachusetts Institute
`of Technology. Ex. 2003 ¶ 5.
`Neither party presents a detailed evidentiary showing under the
`factors typically considered in determining the level of ordinary skill in the
`art. Factors pertinent to this determination include: (1) educational level of
`the inventor; (2) type of problems encountered in the art: (3) prior art
`solutions to those problems; (4) rapidity with which innovations are made;
`(5) sophistication of the technology, and (6) educational level of workers
`active in the field. Not all such factors may be present in every case, and
`one or more of these or other factors may predominate in a particular case.
`Id. These factors are not exhaustive but are merely a guide to determining
`the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex,
`Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
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`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Both parties refer to “education and experience
`in mechanical engineering.” Their proposals are not, in fact, substantially
`different. Patent Owner’s proposed level of skill, however, would include
`anyone with an undergraduate degree in mechanical engineering or similar
`discipline, regardless of whether they had any actual knowledge or
`experience in the present field of endeavor, i.e. windshield wiper blades.
`See PO Resp., 1 (proposing “mechanical engineering . . . or . . . experience
`in the field”). Patent Owner’s proposed level, thus, would include virtually
`anyone with a mechanical engineering degree with no knowledge of “the
`art” of windshield wiper technology. Accordingly, we adopt Petitioner’s
`proposed level of skill.
`
`c Discussion
`Application claim 8, which, according to Petitioner, incorporates
`every element of claim 1 of the ’698 patent, was rejected under 35 U.S.C.
`§ 103(a) as unpatentable over Arai in view of Appel ’770. Pet. 10 (citing
`Ex. 1002, 206–07); see also Pet. 30–32 (charts comparing patent claim 1 to
`application claim 8). As discussed in Section III. B (Prosecution History),
`the Board affirmed the Examiner’s rejection of application claim 8.
`Ex. 1002, 291 (“We affirm . . . the ground of rejection [of claim 8] under
`§ 103(a) over Arai in view of Appel [’770].”); see also id. at 296
`(“appellants have not disputed this ground of rejection in the brief . . . we
`summarily affirm this ground of rejection.”).
`
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`We agree with Petitioner’s analysis that all the limitations in claim 1
`were present in rejected application claim 8. If so, why did claim 1 issue?
`Also as discussed in Section III. B (Prosecution History), claim 1 resulted
`not from application claim 8, but from combining application claims 9 and
`12
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