UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`KAWASAKI RAIL CAR, INC.,
`Petitioner,
`v.
`SCOTT BLAIR,
`Patent Owner
`__________
`
`Case IPR2017-01036
`Patent 6,700,602
`
`PATENT OWNER SCOTT BLAIR’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION
`
`BACKGROUND OF THE ‘602 PATENT
`
`CLAIM CONSTRUCTION
`A. "substantially flushed"
`B. "video signal source unit"
`C. “substantially contiguous”
`D. “transitional segment”
`E. “backlit panel”
`F. “self-contained wiring system”
`
`OVERVIEW OF THE PRIOR ART
`A. Namikawa
`B. Sasao
`C. Amano
`D. Maekawa
`E. Yamada
`F. Sedighzadeh
`G. Schwenkler
`
`V.
`
`PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF PREVILING ON ANY OF THE ASSERTED
`GROUNDS
`
`A. Ground A. Claims 5 and 7 are patentable over Namikawa in
`view of Sasao, Amano and Maekawa
`
`i.
`
`Claim 1
`
`Page
`1
`
`1
`
`6
`6
`6
`6
`6
`7
`8
`
`9
`9
`9
`10
`12
`13
`14
`15
`
`17
`
`17
`
`18
`
`21
`
`a. The prior art does not teach or suggest the
`availability of space at the junction of the
`sidewall and the ceiling
`b. A POSITA would not have been motivated to
`mount a monitor substantially flush with
`an adjacent wall surface structure of a subway
`car because of heightened safety requirements,
`an extreme aversion to any potential fire hazards,
`and knowledge that a television should never be put
`in a “built-in” enclosure
`
`25
`
`

`

`32
`c. The proposed modification or combination
`of the prior art would change the principle of operation
`of the prior art invention being modified
`
`ii.
`
`Claims 5 and 7
`
`B. Ground E. Claims 8, 9, 12–14, 20–22, and 24–29 are patentable
`over Namikawa, Sasao, Amano, and Yamada or Sedighzadeh
`i.
`Claim 8
`ii.
`Claims 9 and 12-14
`iii.
`Claims 20-22 and 24-29
`
`C. Ground I. Claims 11 and 23 are patentable over Namikawa,
`Sasao, Schwenkler, and Yamada or Sedighzadeh
`
`i.
`ii.
`
`Claim 11
`Claim 23
`
`D. Ground M. Claims 15-19 are patentable over Namikawa,
`Sasao, Amano and Schwenkler
`
`i.
`ii.
`
`Claim 15
`Claims 16-19
`
`VI.
`
`CONCLUSION
`
`34
`
`37
`
`37
`40
`43
`
`47
`
`47
`50
`
`51
`
`51
`52
`
`56
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) ....................................................35
`
`In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)..............................................33, 45
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)..............................................................................42, 47
`
`In re Ratti, 270 F.2d 810, 123 USPQ 349 (C.C.P.A. 1959)....................................................33, 46
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999).....................................................................35, 42
`
`In re Warner, 379 F.2d 101 (C.C.P.A. 1967)................................................................................20
`
`KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727 (2007)...................................................................42, 46
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir.
`1983)........................................................................................................................................48, 53
`
`Other Authorities
`
`37 C.F.R. § 42.107...........................................................................................................................1
`
`MPEP § 2143.01......................................................................................................................33, 45
`
`MPEP § 2143.03............................................................................................................................34
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`2001
`2002
`2003
`2004
`2005
`
`2006
`2007
`2008
`
`Description
`Decision on ex parte appeal
`Declaration of Jack R. Long
`Appeal Brief from ex parte appeal
`Complete Copy of the Proposed FRA rules
`United States Consumer Product Safety Commission Guidelines for
`Television Receiver Safety
`Supplemental Declaration of Jack R. Long
`Declaration of Joseph B. Zicherman, Ph.D., SFPE
`Deposition transcript of Lowell Malo
`
`

`

`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner Scott Blair ("PO" or "Blair") files this
`
`Response to the Petition for Inter Partes Review of U.S. Patent No. 6,700,602 ("the '602 patent")
`
`submitted by Petitioner Kawasaki Rail Car, Inc. ("Kawasaki" or "Petitioner").
`
`I.
`
`INTRODUCTION
`
`The Board should confirm the patentability of claims 5, 7-9 and 11-29 of the '602 patent
`
`(“the Challenged Claims”). The PTAB instituted an inter partes review of Grounds A, E, I and
`
`M. Ground A challenges claims 5 and 7 as obvious over Namikawa, Sasao, Amano and Maekawa.
`
`Ground E challenges claims 8, 9, 12-14, 20-22 and 24-29 as obvious over Namikawa, Sasao,
`
`Amano and Yamada or Sedighzadeh. Ground I challenges claims 11 and 23 as obvious over
`
`Namikawa, Sasao, Amano, Schwenkler, and Yamada or Sedighzadeh. Ground M challenges
`
`claims 15-19 as obvious over Namikawa, Sasao, Amano and Schwenkler. PO will not address
`
`any grounds other than those which the Board instituted the within inter partes review.
`
`Claim 10 is unchallenged.
`
`II.
`
`BACKGROUND
`
`The '602 patent is directed to a video display monitor system that is mounted at fixed
`
`intervals at the junction of the sidewall and the ceiling of a subway car. According to certain
`
`embodiments, the video monitor system includes an enclosure for the video monitor that is
`
`designed to be mounted at the junction of the sidewall and the ceiling in such a manner that the
`
`screen of the video display monitor (or an enclosure or a transparent cover unit for the video
`
`display monitor) is substantially flush (or substantially contiguous or flush) with the adjacent
`
`surface structure of the wall and oriented obliquely downward towards the subway car’s seats.
`
`1
`
`

`

`See Ex. 1001, p. 12 at 1:23-44, 1:63-67-2:17, 2:33-46. According to other embodiments, the
`
`video display monitors are each enclosed within an enclosure which may be secured to a
`
`structural member between an inner wall and an outer structural shell of the subway car. See Ex.
`
`1001, p. 12 at 1:55-1:59, 2:56-60. According to still other embodiments, there may be a back lit
`
`panel disposed on the adjacent wall surface structure of the car. See Ex. 1001, p. 12 at 1:51-54,
`
`2:29-31 and 2:53-55.
`
`Prior to the current invention, the problem was how to achieve a television in a subway
`
`car that was smooth and aesthetically pleasing, similar to a television in a wall, but also directed
`
`obliquely downwards for ease of viewing and located at the junction of the sidewall and the
`
`ceiling so as not to take up car space or injure passengers. The problem, posed to the inventor
`
`at the time of the invention, was particularly challenging as subway cars have challenges that do
`
`not exist in residential environments or even buses or Amtrak trains. See Ex. 2007, Declaration
`
`of Joseph B. Zicherman, Ph.D., SFPE (“Zicherman Decl.”) ¶ 8; see also Ex. 2006, Supplemental
`
`Declaration of Jack R. Long in Support of Patent Owner’s Response (“Long Suppl. Decl.”) ¶ 14.
`
`The confined space inside a subway tunnel poses a unique operating environment with a
`
`distinct set of fire risks and hazards to riders and system operating personnel, due to high passenger
`
`loads, and flows of large numbers of passengers at rapid intervals. Zicherman Decl., Ex. 2007, ¶
`
`9. Subway cars operating in tunnels underground present unique challenges to providing fire
`
`suppression personnel and equipment to affected locations. This renders such locations more
`
`hazardous than those where rail passenger vehicles operate in above ground environments such as
`
`commuter trains or those serving intercity passengers (such as an Amtrak train) or buses.
`
`Additional effort is expended to avoid ignition and propagation of fires since it is difficult to
`
`position or include fire extinguishing equipment in tunnels. In addition smoke and hazards from
`
`2
`
`

`

`hot gases will impact subway passengers attempting to evacuate in a fire or smoke emergency.
`
`Zicherman Decl., Ex. 2007, ¶ 9. The risk of fire in a rail rapid transit (RRT) car, such as a subway
`
`car, is of great concern, given that passengers are exposed to the risk of fire and smoke when
`
`operating in tunnels. Great care is taken when designing RRT cars to be used in underground
`
`operating environments to avoid potential fires and fire hazards. Zicherman Decl., Ex. 2007, ¶ 9.
`
`This is confirmed by the proposed Federal Railroad Administration (“FRA”) rules
`
`provided by Petitioner, which states, “The intent of the guidelines is to prevent fire ignition.” See
`
`Ex. 2004, p. 17. The proposed FRA rules further provide, “Fire and post-collision conditions
`
`result in 30 percent of the fatalities and 16 percent of the serious injuries.” Ex. 2004, p. 18. The
`
`FRA believed the proposed requirements would aid in reducing the number of fatalities and
`
`injuries by reducing the likelihood of fire. Ex. 2004, p. 18. The FRA rule, as enacted, provides
`
`to the extent possible, interior fittings shall be recessed or flush mounted. Ex. 1015, p. 154.
`
`The FRA regulations prohibit installation of a potentially fire causing “interior fitting” if it would
`
`create an ignition or fire spread hazard. Zicherman Decl., Ex. 2007, ¶ 11. The FRA would also
`
`prohibit any “interior fitting” if it would pose a fire hazard. Zicherman Decl., Ex. 2007, ¶ 13.
`
`The FRA would not require an “interior fitting” if it would pose a fire hazard. Zicherman Decl.,
`
`Ex. 2007, ¶ 26. Long Suppl. Decl., Ex. 2006, ¶ 25.
`
`In fact, Petitioner’s own expert testifies that the first recited goal in design considerations
`
`is safety. Ex. 1015 ¶¶ 32-33.
`
`According to the United States Consumer Product Safety Commission guidelines:
`
`TV sets are provided with ventilation openings in the cabinet to allow heat
`generated during the operation to be released. If these openings are blocked, heat
`build-up within the TV can cause failures which may result in a fire hazard.
`Therefore: Never cover the opening with cloth or other material. Never block the
`
`3
`
`

`

`bottom ventilation slots of a portable TV by placing it on a bed, sofa, rug, etc.
`Never place a set in a “built-in” enclosure unless proper ventilation is provided.
`
`Ex. 2005, p. 2.
`
`The combined teachings of the prior art do not suggest the modifications advanced by
`
`petitioner to a person of ordinary skill in the art at the time of the invention for the following
`
`reasons, as will be discussed in detail below: (1) according to the FRA rules provided by Petitioner,
`
`fire and post-collision conditions result in 30 percent of the fatalities and 16 percent of the serious
`
`injuries. (2) The FRA believed the proposed requirements would aid in reducing the number of
`
`fatalities and injuries by reducing the likelihood of fire. (3) The proposed FRA rules provide to
`
`the extent possible, interior fittings shall be recessed or flush mounted. (4) The proposed FRA
`
`rules provide, “The intent of the guidelines is to prevent fire ignition.” (5) The Consumer Product
`
`Safety Commission issued guidelines for Television Receiver Safety providing that the bottom
`
`ventilation slots of a TV should never be blocked and you should never place a television set in a
`
`“built-in” enclosure. (6) The FRA would not require an “interior fitting” if it would pose a fire
`
`hazard. Zicherman Decl., Ex. 2007, ¶ 26; Long Suppl. Decl., Ex. 2006, ¶ 26. (7) Petitioner’s own
`
`expert testifies that safety is the first recited consideration with respect to designing rail car
`
`interiors. (8) A POSITA, in the 1995-1997 timeframe, would not have been motivated to mount
`
`a monitor substantially flush with an adjacent wall surface structure of a subway car because of
`
`heightened safety requirements, an extreme aversion to any potential fire hazards, and knowledge
`
`that a television should never be put in a “built-in” enclosure and the ventilation slots should never
`
`be blocked. Zicherman Decl., Ex. 2007, ¶¶27-28; Long Suppl. Decl., Ex. 2006, ¶ 15. (9) A
`
`POSITA, in the 1995-1997 timeframe, would not be motivated to provide transparent cover units
`
`covering respective ones of the video display monitors to be substantially flush with the adjacent
`
`surface structure of the transitional wall portion as they would expect that a transparent cover unit
`
`4
`
`

`

`would further prevent ventilation of the display monitor, cause heat build-up and create a fire
`
`hazard. Zicherman Decl., Ex. 2007, ¶ 33; Long Suppl. Decl., Ex. 2006, ¶ 34. (10) A POSITA
`
`reading Schwenkler would not be motivated to place back lit panels next to the video screen, as
`
`Schwenkler teaches the need for lighting fixtures arranged end-to-end to avoid diverse levels of
`
`light intensity, which leads to passenger eye discomfort Long Suppl. Decl., Ex. 2006, ¶ 25.
`
`(11)
`
`A POSITA would not be motivated to place lighting fixtures next to a monitor which is mounted
`
`within the transitional wall portion for fire safety reasons, as lighting fixtures in close proximity
`
`to a monitor would contribute more heat to a monitor that requires ventilation and requires that
`
`heat build-up be avoided. Zicherman Decl., Ex. 2007, ¶ 32. Heat build-up in or near a video
`
`display monitor creates a fire hazard and is to be avoided. Zicherman Decl., Ex. 2007, ¶ 30; see
`
`also Consumer Product Safety Division Guidelines for Television Receiver Safety, “heat build-up
`
`within the TV can cause failures which may result in a fire hazard.” Ex. 2005, p. 2.
`
`Still further, as will be discussed in detailed below, prior to the current invention, there was
`
`nothing to teach or suggest the availability of space beyond the wall at the junction of the sidewall
`
`and the ceiling as would be required to substantially flush mount a monitor.
`
`5
`
`

`

`III.
`
`CLAIM CONSTRUCTION
`
`A.
`
`"substantially flushed"
`
`During reexamination of the '602 patent, the Board construed "substantially flush" to mean
`
`"a surface which is to a great extent even with an adjoining one."
`
`B.
`
`"video signal source unit"
`
`The term "video signal source unit" in the '602 patent should be given its broadest
`
`reasonable construction in light of the specification.
`
`C.
`
`"substantially contiguous"
`
`The term "substantially contiguous" should be assigned ordinary and customary meaning.
`
`PO submits that the term "substantially contiguous" would be understood to be a surface
`
`which is to a great extent "touching throughout in an unbroken sequence." Ex. 2003.
`
`D.
`
`"transitional segment"
`
`Claim 15 provides, a transitional segment "disposed at the junction of the sidewall and the
`ceiling."
`
`6
`
`

`

`Ceiling
`
`Sidewall
`
`Transitional segment
`
`E.
`
`"backlit panel"
`
`The term "backlit panel" should be construed according to its ordinary and customary
`
`meaning.
`
`7
`
`

`

`F. “self-contained wiring system”
`
`A “self-contained wiring cabling system” is described in the specification as being
`
`independent of any previously installed track, tunnel or control systems. Ex. 1001, pp. 8-9, 2:65-
`
`67, 3:1-4.
`
`8
`
`

`

`IV.
`
`OVERVIEW OF PRIOR ART
`
`A.
`
`Namikawa
`
`Namikawa teaches externally mounted liquid crystal televisions that are ON a wall face
`
`above each seat. See Namikawa, Ex. 1004, p. 6 describing Fig. 1, "a plurality of liquid crystal
`
`televisions 12 are disposed along the direction of travel on a wall face above each seat 11 inside
`
`car 10. The liquid crystal television is assembled in a mounting position…."
`
`Thus, Namikawa teaches a liquid crystal television mounted on the wall. The Board has
`
`found that a monitor on top of the surface of the car is not substantially flushed against the car
`
`surface. Ex. 2001, p. 5. (“Thus, we agree with Appellant that a screen located at a monitor on top
`
`of the surface of the car would not be substantially flushed against the car surface.”).
`
`Nothing within the teachings of Namikawa teaches or suggests the availability of space
`
`beyond the wall, let alone the availability of space beyond the wall at the junction of the sidewall
`
`and the ceiling to allow for the screen of the monitor to be substantially flushed with the adjacent
`
`wall surface structure of the car. Long Suppl. Decl., Ex. 2006, ¶ 16.
`
`B.
`
`Sasao
`
`Sasao teaches a modified rear projection television in an ordinary residential or
`
`commercial building. Sasao, Ex. 1011, [0010]). The television of Sasao is structured to be
`
`supported on the floor in a cabinet in an interior of a wall of an ordinary residence. See Sasao
`
`Ex. 1011, Figs. 1, 2, 3 and 4, [0003]. Sasao mentions fire safety concerns, providing,
`
`“Further, safety can be improved by making this cabinet 12 out of a material having good
`
`fire resistance.” Sasao, Ex. 1011, at [0015].
`
`The solution provided by Sasao is to place a floor-supported television behind a wall
`
`9
`
`

`

`in an ordinary room so that the screen of the television extends through the wall thickness to
`
`be located substantially flush with the room wall with a frame of sufficient width placed
`
`around its periphery to cover the wall opening. Sasao, Ex. 1011, at [0010]. Sasao teaches
`
`making a cabinet out of a fire-resistant material to address fire concerns. Sasao does not
`
`teach or suggest any mounting system for the monitor, let alone a mounting system for a
`
`subway car for flush mounting video monitors at the junction between the subway car’s side
`
`wall and a ceiling.
`
`C.
`
`Amano
`
`Amano teaches screens of monitors being located quite some distance away from the
`
`surface structure of the car. The PTAB has found, “Amano’s Figures 4-6 cited by the
`
`Examiner, especially looking at the side views of the drawings show the screens of the
`
`monitors being located at quite some distance away from the surface structure of the car,
`
`and thus, not being reasonably ‘substantially’ or to a great extent flushed against the surface
`
`(see e.g., Amano’s Figure 4 reproduced below).” Ex. 2001, page 5. Patent Owner’s
`
`Preliminary Response (“Paper 6”) at Page 7.
`
`10
`
`

`

`
`
`Amano Fig. 4
`Amano Fig. 4
`
`
`
`Amano Fig. 6
`Amano Fig. 6
`
`11
`11
`
`

`

`Amano teaches a monitor that is mounted on the ceiling and/or to the luggage rack. More
`
`particularly, the invention teaches a system of installed screens which are externally mounted at
`
`locations away from any adjacent wall surface structure of the car. Thus, Amano also does not
`
`teach a system wherein the screens are “substantially flushed” with the wall adjacent surface.
`
`Also, Amano does not teach or suggest each monitor being mounted at the junction of the
`
`sidewall and ceiling, with the screen of the monitor substantially flushed with the adjacent wall
`
`surface structure of the car. Long Suppl. Decl., Ex. 2006, ¶ 19.
`
`D.
`
`Maekawa
`
`Maekawa teaches a monitor mounted on a sidewall of a train. Again, the monitor is
`
`not mounted at the junction of the sidewall and ceiling, is not substantially flushed with the
`
`adjacent wall surface structure of the car, and is not directed obliquely downwardly toward
`
`the car seats. See Paper 6, pp. 7-8.
`
`Maekawa’s system does not disclose televisions installed at the junction of the sidewall
`
`12
`
`

`

`and the ceiling of a subway car with their screens substantially flushed with the adjacent wall
`
`surface and their screens directed obliquely downwards to the subway car’s seats. Maekawa
`
`teaches monitors installed on top of a sidewall and not substantially flushed. See Long Suppl.
`
`Decl., Ex. 2006, ¶20.
`
`Maekawa also discloses an elaborate ventilation system. A plurality of ventilators are
`
`mounted on the roof of the car body, and the ventilators are forced ventilators forcing air into the
`
`car from the outside while it is traveling. Maekawa, Ex. 1009, p. 3.
`
`E. Yamada
`
`Yamada teaches a monitor that is in the back of a chair. Petitioner attempts to argue that a
`
`screen (depicted above as 5) within and inside the video display monitor, as in Yamada, teaches a
`
`transparent cover unit. It does not, and this argument should be wholly rejected. Yamada does
`
`13
`
`

`

`not teach a transparent cover unit that covers the video display monitors. The screen inside the
`
`actual video display does not support such a teaching.
`
`F. Sedighzadeh
`
`Sedighzadeh teaches a swiveling support structure for a television that drops from the
`
`ceiling with a shell around it. Neither the television nor the shell are flush with the ceiling. There
`
`is a plexiglass pane inside the shell that also is not flush with the adjacent surface, providing,
`
`"The opening or window 64 in the shell has permanently mounted therein a tinted plexiglass pane
`
`70 which is disposed inwardly of the flexible wall 68 so that when the flexible wall is moved into
`
`its closed position of Fig. 7, the flexible wall overlies and obstructs the window." Ex. 1025, 6:2-
`
`7 (emphasis added). The cover in Sedighzadeh is not substantially flush with the adjacent surface
`
`structure of the transitional wall portion. Still further, the transparent cover of Sedighzadeh is
`
`inside the outer cover, and Sedighzadeh teaches a television that drops from the ceiling with a
`
`shell around it.
`
`Sedighzadeh Fig. 2
`
`14
`
`

`

`Sedighzadeh teaches a television support structure that drops from the ceiling and allows for
`
`swiveling such that "the monitor can be positioned for easy viewing by large numbers of
`
`individuals in a room." Sedighzadeh, Ex. 1025, 1:61-64. Sedighzadeh also teaches a “shell which
`
`surrounds and encloses the framework and television monitor…. the television monitor is merely
`
`seated on the tray on the support structure.” Ex. 1025, 2:21-30. Sedighzadeh teaches a television
`
`that swivels and is easily removed from a support structure that hangs from the ceiling to allow
`
`for the television to be removed for repairs.
`
`G. Schwenkler
`
`Schwenkler teaches a light that is mounted at and on top of the ceiling and the sidewall.
`
`Schwenkler teaches a light with a plastic display section 36 that is translucent and is adapted to
`
`receive against the outer surface thereof a display card 52 for observance by passengers in the
`
`vehicle. The section 36 is of arcuate configuration to permit the ready retention of a card 52 there
`
`against. Ex. 1026, 5: 43-47.
`
`15
`
`

`

`Schwenkler is directed to lighting fixtures that run the entire length of the subway car.
`
`Schwenkler expressly teaches away from individual lights as would be required to place back lit
`
`panels next to the video screens (as advanced by Petitioner), stating, “Individual or spot reading
`
`lamps are not only objectionable from the standpoint of excessive cost, but if used alone also serve
`
`to create areas of diverse levels of light intensity which oftentimes contributes to passenger eye
`
`discomfort.” Ex. 1026, 2: 19-23.
`
`16
`
`

`

`V.
`
`PETITIONER HAS NOT SHOWN A REASONABLE LIKELIHOOD OF
`PREVAILING ON ANY OF THE ASSERTED GROUNDS
`
`A.
`
`Ground A. Claims 5 and 7 are patentable over Namikawa in view of Sasao,
`Amano and Maekawa
`
`Claims 5 and 7 depend from Claim 1. Claim 1 is currently the subject of inter partes review
`
`in a related proceeding, IPR2017-00117. Claim 5 provides, “The subway car of claim 1 wherein
`
`the video signal source unit comprises a video tape player, a video disk player or computer-based
`
`digital video recorder.” Claim 7 provides, "The subway car of any of claim 1 including a self-
`
`contained wiring-cabling system connecting the video monitors to the video signal source unit."
`
`The combined teachings of Namikawa in view of Sasao, Amano and Maekawa do not
`
`suggest the modifications advanced by petitioner to a person of ordinary skill in the art at the time
`
`of the invention for the following reasons, as will be discussed in detail below: (1) The prior art
`
`does not teach or suggest the availability of space behind the wall at the junction of the sidewall
`
`and the ceiling. (2) According to the proposed FRA rules provided by Petitioner, fire and post-
`
`collision conditions result in 30 percent of the fatalities and 16 percent of the serious injuries. (3)
`
`The FRA believed the proposed requirements would aid in reducing the number of fatalities and
`
`injuries by reducing the likelihood of fire.
`
`(4) The enacted FRA rule provides to the extent
`
`possible interior fitting shall be recessed or flush mounted. (5) The proposed FRA rules provide,
`
`“The intent of the guidelines is to prevent fire ignition.” (6) The Consumer Product Safety
`
`Commission issued guidelines for Television Receiver Safety providing that
`
`the bottom
`
`ventilation slots of a TV should never be blocked and you should never place a television set in a
`
`“built-in” enclosure. (7) The FRA would not require an “interior fitting” if it would pose a fire
`
`hazard. Zicherman Decl., Ex. 2007, ¶ 26; Long Suppl. Decl., Ex. 2006, ¶ 25. (8) Petitioner’s own
`
`expert testifies that safety is the first recited consideration with respect to designing rail car
`
`17
`
`

`

`interiors. (9) A POSITA, in the 1995-1997 timeframe, would not have been motivated to mount
`
`a monitor substantially flush with an adjacent wall surface structure of a subway car because of
`
`heightened safety requirements, an extreme aversion to any potential fire hazards and knowledge
`
`a television should never be put in a “built-in” enclosure and the ventilation slots should never be
`
`blocked. Zicherman Decl., Ex. 2007, ¶¶27-28; Long Suppl. Decl., Ex. 2006, ¶ 27.
`
`Therefore, Namikawa in view of Sasao, in further view of Amano or Maekawa, still would
`
`not meet all the claim limitations of Claims 1, 5 and 7. Ground A should be rejected.
`
`i. Claim 11
`
`The Board in its decision to institute stated, “For the limitation, ‘substantially flushed,’
`Petitioner contends that Namikawa’s Figure 1, as understood by a person of ordinary skill in the
`art, illustrates LCD monitors that are flush with adjacent wall and ceiling panels. Pet. 27.” Paper
`10, pp 17-18.
`
`The argument advanced by Petitioner that Namikawa’s Figure 1, as understood by a
`POSITA, illustrates LCD monitors that are flush with adjacent wall and ceiling panels, is entirely
`
`incorrect. Namikawa clearly teaches a rounded back television that is mounted on the sidewall
`and is not substantially flush with the adjacent wall and ceiling panels. Long Suppl. Decl., Ex.
`2006, ¶ 16.
`
`1 Claim 1 is not within the current IPR. PO is addressing Claim 1 as the Board addressed Claim 1 in its decision to
`institute, and Claims 5 and 7 depend from Claim 1.
`
`18
`
`

`

`If Figure 1 was substantially flush with the adjacent wall and ceiling panels, the side
`portions of the monitor would not be visible.
`
`Still further, Namikawa provides, "Means for solving the Problems. In order to achieve
`
`the objective described above, the present device allows broadcasting of commercials or
`
`broadcast programming taken from broadcasting media by disposing a plurality of televisions
`
`on a wall face inside a car of a transit bus, electric train or the like. The plurality of televisions
`
`are disposed above the seats in the car." See Ex. 1005, p.4, lines 3-7. Namikawa also states, "A
`
`public transport vehicle characterized in that commercials or broadcast programming taken
`
`from broadcast media can be broadcast by disposing a plurality of televisions on a wall face
`
`inside a car of a transit bus, electric train, or the like.” See Ex. 1005, p. 2, lines 4-6 (emphasis
`
`added). Namikawa further states, "a plurality of liquid crystal televisions 12 are disposed along
`
`19
`
`

`

`the direction of travel on a wall face above each seat 11 inside car 10." Ex. 1005, p. 6, lines 2-
`
`3 (emphasis added). Namikawa further states, "A liquid crystal televisions 22 are disposed on
`
`a wall face above the window side of seats 21.” Ex. 1005, p. 8, lines 3-4 (emphasis added).
`
`Namikawa depicts and clearly states the monitors are disposed ON a wall face. Namikawa
`
`teaches monitors that are mounted ON TOP of a wall face; they are an appreciable distance from
`
`the wall and the screen of the monitor is NOT substantially flushed with the adjacent wall surface
`
`structure of the car. Long Suppl. Decl., Ex. 2006, ¶ 16. Petitioner would have the Board ignore
`
`the entire specification of Namikawa and rely upon expert testimony regarding a single figure that
`
`clearly is not supported by the reference. Assumptions and unfounded speculation about prior art
`
`cannot be the basis for a determination of obviousness. See In re Warner, 379 F.2d 1011, 1017
`
`(C.C.P.A. 1967). Still further, any conclusion that Namikawa teaches a monitor substantially flush
`
`with the surrounding wall surface would be contrary to the previous findings by the Board that a
`
`monitor on top of the surface of the car is not substantially flushed against the car surface. Ex.
`
`2001, p. 5. (“Thus, we agree with Appellant that a screen located at a monitor on top of the surface
`
`of the car would not be substantially flushed against the car surface.”).
`
`Expert for Petitioner states, “One of ordinary skill in the art thus would have been
`
`motivated to move the devices into the space between the inner and outer walls of the railcar to
`
`the extent possible, until the obliquely downward screen surface of the devices reach a sidewall
`
`on the one side (i.e. the bottom edge) and the ceiling on the other side (i.e., at the top edge).
`
`Similarly, for railcars which have a defined panel (or section) connecting a sidewall to the ceiling,
`
`one of ordinary skill in the art would have been motivated to move the devices into that panel (or
`
`section) so that the screen of the devices would be even with or on the same plane as that panel
`
`(or section).” Malo Decl., Ex. 1015, ¶ 42 (emphasis added).
`
`20
`
`

`

`Underlying the arguments advanced by Petitioner is the notion that the monitor is just
`
`moved into the wall. These arguments fail, though, for a number of reasons. The prior art does
`
`not teach or suggest the availability of space beyond the wall at the junction of the sidewall and
`
`the ceiling of a subway car to allow for the screen of the monitor to be substantially flushed. Long
`
`Suppl. Decl., Ex. 2006, ¶16. None of the prior art teaches or suggests such an availability at the
`
`junction of the sidewall and the ceiling, and Petitioner’s expert cannot cure this deficiency.
`
`Second, as will be discussed in detail below, a POSITA would not have been motivated to mount
`
`a monitor substantially flush with an adjacent wall surface structure of a subway car because of
`
`heightened safety requirements, an extreme aversion to any potential fire hazards, and knowledge
`
`a television should never be put in a “built-in” enclosure and the ventilation slots should never be
`
`blocked. Zicherman Decl., Ex. 2007, ¶ 15; Long Suppl. Decl., Ex. 2006, ¶ 27.
`
`a. The prior art does not teach or suggest the availability of space at the junction
`of the sidewall and the ceiling
`
`There is nothing within the prior that teaches or suggests the availability of space beyond
`
`the wall at the junction of the sidewall and the ceiling. As discussed above, nowhere does
`
`Namikawa say it is IN a wall face. Instead, it clearly states it is ON a wall face, and all of the
`
`figures confirm this point. Namikawa clearly teaches monitors ON a wall face and does not teach
`
`any availability of space beyond the wall at the junction of the sidewall and the ceiling as would
`
`be required to achieve the screen of the monitor substantially flushed with the adjacent wall
`
`surface structure of the car. It is noted that Petitioner’s expert testifies to a fan speed control and
`
`lighting fixture which are flush mounted within a side wall, not mounted at the junction of the
`
`sidewall and the ceiling. A POSITA, in the 1995-1997 timeframe would not expect a cavity at
`
`the junction of the sidewall and the ceiling (or the transitional segment) sufficient to retain a
`
`21
`
`

`

`display monitor such that it would be substantially flush with the adjacent wall surface. If we
`
`are to accept that a cavity would be expected at the junction of the sidewall and the ceiling in the
`
`time period of 1995-1997, there would be no expectation that it would be available as it could be
`
`filled with thermal insulation, sound deadening material, wiring and cable and an array of
`
`structural members. Long Suppl. Decl., Ex. 2006, ¶ 29.
`
`Amano and Maekawa are not silent on this issue and clearly reveal no availability of space
`
`beyond the wall at the junction of the sidewall and the ceiling.
`
`Amano Figure 4
`
`22
`
`

`

`See Maekawa
`See Maekawa
`
` i-H'i‘a 3,111.5
`
`Lh4fl§4?iIL
`If 2
`LE
`
`See also Miyajima
`See also Miyajima
`
`
`
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`
`The prior art would not teach or suggest to a POSITA any availability of space at the
`The prior art would not teach or suggest to a POSITA any availability of space at the
`
`junction of the sidewall and the ceiling, Sasao is directed to a residential wall and is irrelevant to
`junction of the sidewall and the ceiling, Sasao is directed to a residential wall and is irrelevant to
`
`23
`23
`
`

`

`the questi