Trials@uspto.gov
`571.272.7822
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` Paper 21
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` Entered: April 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
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`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
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`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) filed a Petition
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`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 44 and 49 of U.S. Patent No. 8,537,279 B2 (“the ’279 patent”).
`Paper 1 (“Pet.”). Applying the standard set forth in 35 U.S.C. § 314(a), we
`granted Petitioner’s request and instituted an inter partes review of all
`challenged claims. Paper 6 (“Dec.”).
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`During the trial, Patent Owner timely filed a Response (Paper 11, “PO
`Resp.”), to which Petitioner timely filed a Reply (Paper 14, “Reply”).
`Petitioner requested an oral hearing, but then withdrew its request and we
`canceled the hearing. See Papers 16, 20.
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`Additionally, Patent Owner filed a Motion to Exclude Evidence
`(Paper 15), to which Petitioner filed an Opposition (Paper 18), and Patent
`Owner filed a Reply (Paper 19).
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. Based on the record
`before us, we determine that Petitioner has shown, by a preponderance of the
`evidence, that claims 44 and 49 of the ’279 patent are unpatentable.
`I. BACKGROUND
`A. The ’279 Patent (Ex. 1001)
`The ’279 patent describes a digital microform imaging apparatus
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`(DMIA) that may be used to view/scan a broad range of microfilm media
`types (e.g., microfilm, microfiche, 16 mm or 35 mm film roll). See
`Ex. 1001, 1:12–13, 3:19–20, 7:50–53. The DMIA can accommodate a broad
`range of image reduction ratios without the need to change zoom lenses. See
`id. at 3:21–23. Figure 4 of the ’279 patent is reproduced below:
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`Figure 4 illustrates a perspective view of a DMIA with the cover removed
`and as viewed from generally rearward of the apparatus. Id. at 3:58–60.
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`The DMIA illustrated in Figure 4 includes: microform media support
`44; chassis 66; mirror mount 78; first lead screw 86; second lead screw 88;
`lens 90; area sensor 97; first carriage 92; second carriage 98; first motor 100;
`second motor 108; timing pulleys 102, 106, 110, 114; and belts 104, 112.
`See id. at 5:1–6:5. Microform media support 44 is configured to support a
`microform media. Id. at 5:1–2. A fold mirror (not shown) reflects incident
`light transmitted through microform media and is connected to mirror mount
`78, which is connected to chassis 66. Id. at 5:25–27, 5:30–32. Lens 90 is
`connected to first carriage 92, which is linearly adjustable by rotating first
`lead screw 86. Id. at 5:37–39. Area sensor 97 is connected to second
`carriage 98, which is linearly adjustable by rotating second lead screw 88.
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`Id. at 5:46–48. First motor 100 is rotationally coupled to first lead screw 86
`by timing pulley 102, belt 104 with teeth, and timing pulley 106; and second
`motor 108 is rotationally coupled to second lead screw 88 by timing pulley
`110, belt 112 with teeth, and timing pulley 114. Id. at 6:1–5.
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`A controller (not shown) is electrically connected to first motor 100,
`second motor 108, and area sensor 97. Id. at 6:5–7. The controller receives
`commands and inputs, controls first and second motors 100, 108 and other
`components of the DMIA, and outputs an image data of area sensor 97.
`Id. at 6:7–11. The layout of the DMIA, including separately adjustable area
`sensor 97 and lens 90, and algorithms for moving the lens and sensor to
`appropriate respective locations to achieve proper magnification and focus
`of the image allows the DMIA to autofocus to accommodate different
`reduction ratios of different film media without the need for iterative
`measurements and refocusing of lens 90. Id. at 5:55–64. The DMIA
`depicted in Figure 4 includes additional components not described.
`B. Illustrative Claim
`Claims 44 and 49 are independent claims. Claim 44 is illustrative of
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`the subject matter at issue.
`44. A digital microform imaging apparatus, comprising:
`a chassis;
`a fold mirror supported by the chassis;
`a first elongated and substantially straight1 lead member
`supported by the chassis;
`a first carriage slidingly coupled to the first lead member;
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`1 The ’279 patent includes a Certificate of Correction, which corrects “strait”
`to be “straight.” See Ex. 1001, 25.
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`an area sensor supported by the first carriage for
`movement therewith to adjust a distance between the area sensor
`and the fold mirror;
`a lens supported by the chassis and positioned between the
`area sensor and the fold mirror; and
`a first motor coupled to the first carriage via a first belt for
`moving the first carriage within a range of motion along at least
`a portion of the first lead member.
`C. Instituted Grounds of Unpatentability
`Petitioner relies on the following references:
`1. U.S. Patent Application No. 2004/0012827 A1, published Jan.
`22, 2004 (“Fujinawa”) (Ex. 1004).
`2. U.S. Patent No. 5,585,937, issued Dec. 17, 1996 (“Kokubo”)
`(Ex. 1005).
`3. U.S. Patent No. 5,061,955, issued Oct. 29, 1991 (“Watanabe”)
`(Ex 1006).
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`We instituted trial under 35 U.S.C. § 103(a) based on the following
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`combinations of references. Dec 20.
`Claim(s)
`References
`44, 49
`Fujinawa and Kokubo
`49
`Fujinawa and Watanabe
`In support of its contentions, Petitioner submitted a declaration by its
`witness, Anthony J. Senn, PE. Ex. 1002. In response, Patent Owner
`submitted a declaration by its witness, Jonathan D. Ellis, PhD. Ex. 2005.
`Both experts were cross-examined during the trial, and transcripts of their
`depositions are in the record. Exs. 2007 (Senn deposition); 1012 (Ellis
`deposition).
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`D. Related Proceedings
`Patent Owner identifies the ’279 patent as a continuation of U.S.
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`Patent No. 8,269,890 (’890 patent), and a parent to U.S. Patent No.
`9,179,019 (’019 patent) and U.S. Patent No. 9,197,766 (’766 patent).
`Paper 4. Petitioner and Patent Owner identify numerous matters as related
`to this proceeding, including currently pending U.S. Patent Application No.
`14/931,583, which is a continuation of the ’279 patent; Petitioner’s
`concurrently filed Petition for inter partes review of the ’019 patent
`(IPR2017-00178); and a number of district court litigation matters involving
`the ’279, ’890, ’019, and ’766 patents. See Paper 4; Pet. 2.
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been 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 skill in
`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations such as commercial success, long felt but unsolved needs,
`and failure of others.2 Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). The obviousness inquiry further requires an analysis of “whether
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`2 The record does not include arguments or evidence regarding objective
`indicia of non-obviousness.
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`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with
`some rational underpinning to support the legal conclusion of
`obviousness”)).
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`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art, at the time of the
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`filing, “would have had at least some experience with microform imaging
`apparatuses and would have had at least a bachelor of science degree in
`either electrical engineering or mechanical engineering with at least three
`years’ experience designing electro-mechanical products, including imaging
`equipment such copiers, scanners, and/or microform scanners and readers.”
`Pet. 17–18 (citing Ex. 1002 ¶ 39). Patent Owner asserts a person of ordinary
`skill in the art “would have an undergraduate degree in mechanical or optical
`engineering and 3 years of experience working with or designing scanners,
`camera systems or printers, which involve opto-mechanical systems similar
`to that described in the ’279 Patent and the prior art.” PO Resp. 4 (citing
`Ex. 2005 ¶ 20).
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`Our decision does not turn on the minor differences between the
`definitions, particularly as Petitioner asserts that under either definition, its
`analysis remains the same. See Reply 2. Both Petitioner and Patent Owner
`advocate a similar level of experience. Accordingly, we accept the level of
`skill advocated by Patent Owner, with the addition of Petitioner’s
`identification of working with microform scanners and readers as
`permissible experience and electrical engineering as a permissible
`undergraduate degree.
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`C. Claim Construction
`In an inter partes review, claims of an unexpired patent are interpreted
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`using the broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In our Institution
`Decision, we did not find it necessary to construe any terms, and accorded
`them their ordinary and customary meaning. Dec. 6–7.
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`In its Response, Patent Owner asserts the district court in the parallel
`litigation issued its claim construction order and adopted the parties’
`stipulated construction of “first carriage.” PO Resp. 3–4. Patent Owner
`further asserts the district court concluded the preamble phrase “digital
`microform imaging apparatus” limits the claims. Id. at 4. Petitioner agrees
`the district court construction of “first carriage” is the broadest reasonable
`construction. Pet. 18. Petitioner further asserts the parties’ dispute whether
`the preamble limits the claims is not germane to this proceeding because
`each of the prior art references used in this petition discloses a “digital
`microform imaging apparatus.” Id. at 18–19; Reply 3.
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`Although we have considered the construction of the terms anew in
`light of the full trial record, we determine that we need not explicitly
`construe any term to resolve the issues before us. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
`“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”).
`D. Obviousness Over Fujinawa and Kokubo
`Petitioner challenges claims 44 and 49 as obvious under 35 U.S.C.
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`§ 103(a) over Fujinawa and Kokubo. Pet. 20–38.
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`1. Scope and Content of Fujinawa
`Fujinawa describes an image reading apparatus that can handle films
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`having different sizes. Ex. 1004 ¶ 3. Figure 4 of Fujinawa is reproduced
`below:
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`Figure 4 depicts one embodiment of an image reading apparatus during
`reading of roll film. Id. ¶ 22. Image reading apparatus 1 includes reading
`device motor 26, lens motor 27, line sensor 28, and reflective mirror 30. Id.
`¶ 39. Line sensor 28 is supported by a worm that couples line sensor 28 to
`rotating shaft of reading device motor 26 so that the position of the light-
`receiving surface can be moved in accordance with the rotation of the
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`rotating shaft. Id. ¶ 59.3 Lens 29 is supported by a worm that couples lens
`29 to the rotating shaft of lens motor 27 so that it can move in accordance
`with rotation of the rotating shaft. Id. Fujinawa further describes that an
`area-type sensor could be provided instead of line sensor 28. Id. ¶¶ 49, 112.
`A CPU (not depicted) separately drives reading motor 26 and lens motor 27
`to adjust the reading scope and resolution according to the results of the
`determination of the type of film being read. Id. ¶¶ 60, 66. Figure 4 depicts
`additional components of image reading apparatus 1 that are not described.
`2. Scope and Content of Kokubo
`Kokubo describes an image reading device, which optically reads a
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`text image by moving an image reading unit, on which a line sensor and a
`light source for text illuminating are mounted. Ex. 1005, 1:8–11. Figure 1
`of Kokubo is reproduced below:
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`3 Because other sections of Fujinawa describe element 26 as “reading device
`motor” (see e.g., Ex. 1004 ¶¶ 39, 60), we agree with Petitioner that Fujinawa
`mislabels reading motor 26 in paragraph 59 as “take-up motor 26.” See
`Pet. 28 n.3.
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`Figure 1 is a plan view showing features of an image reading device with the
`upper part of the chassis cut away. Id. at 5:66–6:1. The image reading
`device comprises chassis 1, reading unit 6, and motor 7. Id. at 8:52–57,
`9:10–11. Reading unit 6 is supported by guide shaft 4 and rail 5, such that it
`is free to slide toward the front and rear of the image reading device. Id. at
`8:56–59. Kokubo describes that in some embodiments, an image reading
`unit may include a movable mirror, a lens tube consisting of a series of
`lenses, and a line sensor (components not depicted). See id. at 11:63–12:6.
`Motor 7 is provided with drive gear 7a on a rotation shaft, drive pulley 8
`rotated by the drive force of drive gear 7a, driven pulley 9, and timing belt
`10 wound around drive pulley 8 and driven pulley 9, which is also fixed to
`reading unit 6. Id. at 9:10–15. Reading unit 6 is therefore moved by timing
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`belt 10, which moves due to the rotation of motor 7. Id. at 9:15–17. Figure
`1 includes additional components not described.
`3. Claim 44
`Petitioner contends the combination of Fujinawa and Kokubo teaches
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`the limitations recited in independent claim 44. Pet. 20–35. In support of its
`arguments, Petitioner relies on the testimony of Mr. Senn. See id. at 22–35
`(citing Ex. 1002).
`a. digital microform imaging apparatus, chassis, fold mirror,
`first elongated and substantially straight lead member,
`area sensor, and lens limitations
`Petitioner asserts Fujinawa discloses a digital microform imaging
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`apparatus nearly identical to the claimed digital microform imaging
`apparatus. Id. at 20. Petitioner further asserts Fujinawa discloses the
`claimed chassis, fold mirror, first elongated and substantially straight lead
`member, area sensor, and lens limitations. Id. at 20–23, 25–27.
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`We have reviewed Petitioner’s analysis of these limitations recited in
`claim 44 and the supporting evidence. We are persuaded Petitioner
`establishes Fujinawa discloses these limitations for the reasons set forth by
`Petitioner. See id. For example, we agree with Petitioner that Fujinawa
`discloses a “digital microform imaging apparatus” through its description of
`an image reading apparatus for reading films having different sizes, which
`digitizes image signals. Id. at 21–22 (citing Ex. 1004 ¶¶ 3, 64). As another
`example, we agree with Petitioner that Fujinawa’s description of a worm
`connected to rotating shaft of motor 26 meets the “first elongated and
`substantially straight lead member supported by the chassis” limitation. Id.
`at 23 (citing Ex. 1004, Fig. 4, ¶ 59). Patent Owner has not raised arguments
`against these limitations in its Patent Owner Response; therefore, those
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`arguments are waived. Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316,
`1330 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1381 (Fed. Cir.
`2016).4
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`b. first carriage and first motor limitations
`Petitioner asserts the combination of Fujinawa and Kokubo discloses
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`“a first carriage slidingly coupled to the first lead member.” Pet. 23–25, 31.
`In particular, Petitioner asserts Fujinawa depicts and describes a first
`carriage (structure that line sensor 28 is attached to) coupled to the first lead
`member (worm connected to rotating shaft of motor 26) and that the first
`carriage moves along the lead member. Id. at 23–24 (citing Ex. 1004, Fig. 3,
`¶ 59). Petitioner asserts Kokubo discloses a first carriage (reading unit 6)
`slidingly coupled to first lead member (guide rail 5) so that it can slide in the
`direction A or B. Id. at 31 (citing Ex. 1005, 8:52–59). Petitioner asserts
`that, in its proposed combination of Fujinawa with Kokubo’s teachings, one
`of ordinary skill in the art would have known to simply substitute a guide
`rail and belt as disclosed in Kokubo for the worm of Fujinawa, and in that
`instance, the carriage is “slidingly coupled” to the lead member (guide rail
`along which it slides when driven by the belt). Id. at 24–25.
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`Petitioner further asserts the combination of Fujinawa and Kokubo
`discloses “a first motor coupled to the first carriage via a first belt for
`moving the first carriage within a range of motion along at least a portion of
`the first lead member.” Id. at 27–35. Specifically, Petitioner asserts
`Fujinawa meets most of this limitation through its description of reading
`motor 26 for moving the position of line sensor 28 in accordance with the
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`4 As in NuVasive, the Scheduling Order in this proceeding cautioned Patent
`Owner that “any arguments for patentability not raised in the response will
`be deemed waived.” Paper 7, 6.
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`rotation of the rotating shaft. See id. at 27–28 (citing Ex. 1004 ¶ 59).
`Petitioner acknowledges that Fujinawa does not disclose a belt, but argues
`use of a belt is just one of several well-known mechanisms that translate
`rotational movement from a motor to linear motion of a carriage and that use
`of belts would facilitate improved packaging when the motor cannot be
`directly connected to the end of the lead screw. Id. at 29. This assertion is
`supported by testimony of Mr. Senn. See Ex. 1002 ¶ 52. Petitioner also
`asserts that Kokubo discloses a motor (motor 7) coupled to a first carriage
`(reading unit 6) for moving the carriage along a lead member (rail 5) and
`that the coupling mechanism is “a belt” (belt 10) as required by claim 44.
`See Pet. 30 (citing Ex. 1005, 9:11–17). Petitioner, along with supporting
`testimony from Mr. Senn, asserts one of skill in the art at the time of the
`invention of the ’279 patent would have known to simply substitute one
`well-known drive mechanism for moving a carriage along an optical path
`(Fujinawa’s worm) for another well-known drive mechanism for moving a
`carriage along an optical path (Kokubo’s guide rail and belt/pulley drive
`apparatus), and such a combination would have been a simple substitution to
`achieve a predictable result (translation of movement from the motor to the
`carriage to enable the carriage to move along a lead member). See id. at 32–
`33; Ex. 1002 ¶¶ 70–74.
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`Patent Owner contends the prior art does not disclose the use of a belt
`system to move carriages containing optical elements, or the optical
`elements themselves, along an optical path for focusing an image. PO
`Resp. 10. Patent Owner argues Fujinawa uses a worm to move the line
`sensor and lens; and Kokubo discloses a flatbed scanner that moves the
`reading unit 6 and its components as a whole and does not move the lens
`relative to the sensor. Id. at 10–12.
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`Patent Owner argues Petitioner’s proposed modification of Fujinawa
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`in light of Kokubo is not a simple substitution because the substituted
`components would not be performing the same function that was disclosed
`in the prior art, namely moving elements critical to optical focusing. Id. at
`12–13. In particular, Patent Owner asserts the function of Fujinawa’s
`threaded worms is to precisely position a lens relative to an image sensor
`and that any components substituted for the threaded worm must also be
`able to perform that function. Id. at 15–16. Patent Owner argues, with
`support from testimony of Dr. Ellis, that the belt and pulley system of
`Kokubo does not need the same precision as the worms in Fujinawa because
`the image is already in focus when the belt and pulley system moves the
`reading unit. Id. at 16 (citing Ex. 2007, 23:10–19; Ex. 2005 ¶ 30). Patent
`Owner further argues that the device resulting from the proposed
`combination would not have worked for its intended purpose because
`smooth timing belts like those disclosed in Kokubo are prone to slipping,
`which would not allow for movement sufficiently precise to focus an image.
`See id. at 21–23.
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`Additionally, Patent Owner contends Kokubo teaches away from the
`proposed combination. Id. at 26–28. Patent Owner argues Kokubo
`discourages the use of the prior art system depicted in Fig. 49, which uses a
`wire rope and drive pulley system to move the lens relative to the sensor,
`because it states that if the drive pulleys and wire ropes in the system should
`slip, an error occurs in the displacement amount, which would give rise to
`distortion in the image reading by the line sensor. Id. at 26–27 (citing
`Ex. 1005, 2:48–56). Patent Owner asserts that Kokubo teaches its device
`depicted in Figures 14–16 overcomes the deficiencies of the prior art
`because optical parts can be moved with high precision and distortion of the
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`image read is consequentially prevented. Id. at 28 (citing Ex. 1005 13:55–
`61). Patent Owner argues these teachings would have discouraged one of
`skill in the art from making the combination proposed by Petitioner. Id.
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`Petitioner replies the function of the drive mechanism in the claims is
`not to provide precision focusing. Reply 4. Petitioner argues Kokubo is
`relied upon as disclosing a type of drive mechanism and that the
`combination of Fujinawa and Kokubo discloses the use of a belt and pulley
`to move a lens and sensor along an optical path. Id. at 12. Petitioner argues
`that there are a finite number of ways to translate movement and reiterates
`its assertion that the replacement of one known drive mechanism for another
`is nothing more than a simple substitution that yields predictable results. Id.
`at 13.
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`Petitioner further argues that even if the claims require a level of
`precise movement only achieved by using a toothed belt, Kokubo’s teaching
`of a timing belt would be understood by those of skill in the art to be a
`toothed belt. See id. at 5–6 (citing Ex. 1007, 18:24–19:4; Ex. 1012, 9:25–
`10:2, 32:3–33:9; Ex. 1001, 755). Petitioner asserts that Patent Owner’s
`expert acknowledges a toothed belt, as opposed to a smooth belt, is capable
`of providing precise movement it alleges is required by the claims. Id. at 4
`n.1 (citing Ex. 1012, 20:2–17). Petitioner additionally argues that, even
`assuming Kokubo’s belt is smooth, Mr. Senn testified that a control system
`could capture any errors that might arise from the use of smooth belts if
`designed to do so and would not prevent precision focusing. See id. at 8–9
`(citing Ex. 2007, 20:8–12). Petitioner argues that Kokubo does not
`discourage the use of a belt, but rather discourages the use of an un-guided
`wire rope system as opposed to the use of a timing belt and guide rail. See
`id. at 9.
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`We have reviewed Petitioner’s and Patent Owner’s analyses and the
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`supporting evidence and find Petitioner establishes, by a preponderance of
`the evidence, that the combination of Fujinawa and Kokubo teaches the first
`carriage limitation set forth in claim 44. See Pet. 23–25, 31–32. We agree
`with Petitioner that Fujinawa discloses a first carriage (structure to which
`line sensor 28 is attached) coupled to the first lead member (worm). See
`Ex. 1004, Fig. 4, ¶ 59. We further agree Kokubo discloses a first carriage
`(reading unit 6) slidingly coupled to first lead member (rail 5). See
`Ex. 1005, 8:52–59. We are persuaded by Petitioner’s analysis that when the
`guide rail and belt disclosed by Kokubo is substituted for the worm of
`Fujinawa, the carriage is slidingly coupled to the lead member. Pet. 24. We
`address Petitioner’s reason to combine the references below.
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`We are also persuaded Petitioner establishes the combination of
`Fujinawa and Kokubo discloses the first motor limitation. See Pet. 28–32.
`Fujinawa discloses reading motor 26 (first motor) coupled to the first
`carriage (structure supporting line sensor 28) by a worm (lead member),
`which moves the first carriage within a range of motion along a portion of
`the worm. See Ex. 1004, Fig. 4, ¶ 59. Kokubo discloses motor 7 (first
`motor) is coupled to reading unit (6) via belt (belt 10) and that the reading
`unit is moved in the direction A or B by the timing belt along rail 5 (first
`lead member). See Ex. 1005, Fig. 1, 9:11–17. We agree with Petitioner that
`substituting the motor shaft mechanism of Fujinawa for the belt and rail
`configuration of Kokubo discloses a motor coupled to the first carriage via a
`belt for moving the carriage within a range of motion along the lead member
`(rail). See Pet. 32–35. Patent Owner’s arguments that neither reference
`individually discloses the use of a belt system to move carriages containing
`optical elements (PO Resp. 9–12) are not persuasive because Petitioner
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`relies on the combined teachings of the references to meet the first motor
`limitation. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Patent
`Owner’s arguments against the combination are addressed below.
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`We have also considered Petitioner’s rationale for why one of
`ordinary skill in the art would have been motivated to combine Fujinawa and
`Kokubo. Petitioner persuades us that replacing the worm drive mechanism
`disclosed by Fujinawa with the guide rail and belt configuration disclosed by
`Kokubo would have been a simple substitution of one known drive
`mechanism for another that yields predictable results. See Pet. 32–33;
`Reply 13. We credit the testimony of Mr. Senn that the proposed
`combination “would have been a simple substitution of the motor shaft
`mechanism of Fujinawa for the rod and belt configuration of Kokubo to
`obtain a predictable result, i.e., translation of rotational movement from the
`motor to linear movement of the carriage to enable the carriage to move
`along a lead member.” Ex. 1002 ¶ 73. Mr. Senn further testifies that
`“[t]here are a finite quite short list, means of converting rotary motion to
`linear motion.” Ex. 2007, 56:15–16. We determine Petitioner articulates
`sufficient reasoning for the proposed combination to support the legal
`conclusion of obviousness. See KSR, 550 U.S. at 398, 417–18.
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`We are not persuaded by Patent Owner’s arguments that the
`components would not be performing the same function. As noted by
`Petitioner, the claimed functionality is “moving the first carriage,” and not
`“precision focusing.” See Reply 4. We determine that the functionality of
`both Fujinawa’s threaded worm and Kokubo’s rail/belt system is the same—
`namely a drive mechanism for moving the carriage. We are not persuaded
`that replacing the drive mechanism taught by Fujinawa with the drive
`mechanism taught by Kokubo would have been more than a simple
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`substitution (as testified by Mr. Senn (Ex. 1002 ¶ 73)) or would otherwise
`have been challenging or difficult for one of ordinary skill in the art.
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`We are also not persuaded that the combination would not have
`worked for the intended purpose, which is asserted by Patent Owner to be to
`allow movement sufficiently precise to focus an image. Patent Owner,
`through testimony of its expert Dr. Ellis, does convince us that the lens and
`area sensor need to be precisely positioned relative to the microform. See
`PO Resp. 5; Ex. 2005 ¶ 42. We note that Petitioner’s expert, Mr. Senn,
`agrees the lens and area sensor must be precisely positioned. See Ex. 2007,
`67:14–24. But, we are not persuaded that the proposed combination would
`not be capable of precisely focusing an image. Even assuming Kokubo’s
`belt is smooth and prone to slipping, we are persuaded by Petitioner’s
`argument that this would not prevent precision focusing. See Reply 8–9.
`We credit Mr. Senn’s testimony that a smooth belt system would be
`acceptable because a control system could capture any errors that might arise
`from smooth belts. Ex. 2007, 20:6–12. Although we are not persuaded a
`smooth belt is incapable of precision focusing, we additionally note that we
`are persuaded by Petitioner’s arguments that the timing belt disclosed by
`Kokubo would have been understood by those in the art to be a toothed belt
`and that toothed belt drive systems provide precision and are not prone to
`slipping. See Reply 5–8. Patent Owner’s expert testimony supports both
`assertions. See Ex. 1012, 9:21–10:2 (testifying a timing belt has teeth),
`20:2–5 (testifying a tooth belt system to drive components in an imaging
`apparatus would have precision); Reply 4 n.1 (citing the same).
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`Finally, we are not persuaded by Patent Owner’s arguments that
`Kokubo teaches away from the proposed combination. The sections of
`Kokubo cited in support of Patent Owner’s assertion describe that if the
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`drive pulleys and wire ropes should slip in the conventional reading device
`shown in Figures 48 and 49, an error occurs in the displacement amount of
`the wire ropes, which would give rise to distortion in the image. Ex. 1005,
`2:48–56. The cited sections of Kokubo further describe that in the device of
`its fourth embodiment, the lens tube 40 moves along the guide shafts 50, 51
`and that the optical parts can be thus moved with high precision and
`distortion of the image read by the line sensor is consequentially prevented.
`Id. at 13:55–61. As noted by Petitioner (Reply 9), the prior art system
`discussed by Kokubo is an unguided wire rope system. See Ex. 1005,
`Fig. 49, 2:1–6. We disagree with Patent Owner that Kokubo’s description of
`issues with a prior art unguided wire rope system would have discouraged
`one of skill in the art from making the combination proposed by Petitioner to
`replace Fujinawa’s worm with Kokubo’s timing belt and rail system.
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`For the foregoing reasons, we conclude Petitioner has demonstrated,
`by a preponderance of the evidence, that claim 44 would have been obvious
`over Fujinawa and Kokubo.
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`4. Claim