Ex Parte 7,121,489 et al

Patent Trial and Appeal Board

Dec 19, 2014

95001352 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,352 05/05/2010 7,121,489 15804-000001/US/RXA 7638
28289 7590 12/22/2014
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/22/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GENESIS ATTACHMENTS, LLC
Requester, Respondent

v.

ALLIED ERECTING AND DISMANTLING CO., INC., et al.
Patent Owner, Appellant
____________________

Appeal 2014-001006
Inter partes Reexamination Control 95/001,352
Patent US 7,121,489 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

The Patent Owner filed a Request for Rehearing Pursuant to 37 C.F.R.
§ 41.79 requesting reconsideration of the New Decision Under 37 C.F.R.
§ 41.77(f) mailed March 19, 2014 (hereinafter "New Decision") which
rejects claims 1-21 of the ’489 patent.
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We DENY the Patent Owner's request.

ANALYSIS
The Patent Owner asserts that the New Decision is unsupported by
substantial evidence and contrary to law because:
1. The articulated reason for combining Ogawa with Caterpillar in
order to allow the blades of Caterpillar "to be opened wider" lacks
rational underpinnings (Req. 2–4);
2. The articulated reason for combining Ogawa with Caterpillar in
order to "minimize movement of the object[]" lacks rational
underpinnings (Req. 2, 5–7);
3. The Board improperly dismissed statements of the Requester
regarding the asserted "long-felt need" (Req. 2, 7–9);
4. The Board improperly dismissed evidence of copying (Req. 2,
9); and
5. The Board's conclusion of obviousness was based on
impermissible hindsight reconstruction (Req. 2, 9–10).

Argument 1
The Patent Owner asserts that the articulated reason for combining
Ogawa with Caterpillar in order to "allow the blades to be opened wider"
lacks rational underpinnings because a simpler way of making the blades of
Caterpillar open wider is to make the movable jaw smaller as shown in
Patent Owner's modified illustration of Fig. 3 of Caterpillar (see Req. 3-4).
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We initially note that the rationale of the Board was initially set forth
in Appeal 2012-007030 (see Decision mailed September 4, 2014 (hereinafter
"the ’7030 Decision") 30) and was quoted and further explained in the New
Decision in response to the Patent Owner's arguments that the Board failed
to articulate a reason with rational underpinnings (New Decision 13-14).
As to the Patent Owner's argument regarding making the movable jaw
smaller (Request 3-4), we observe that the existence of another alternative
solution that would allow for wider opening does not negate the fact that
such wider opening is attainable by combining the teachings of Caterpillar
and Ogawa, or diminish the conclusion that such combination would have
been obvious to one of ordinary skill in the art. As also explained,
The record also establishes that it is well known in the art to
provide tools with jaws wherein only one of the jaws is
movable and the other is fixed (see, e.g., ’7030 Decision,
FF2 E; FF5 A) or wherein both of the jaws are movable (see,
e.g., FF3 A; ’7030 Decision, FF4 A).
(New Decision 13; see also New Decision 15-16).
Moreover, "the prior art itself clearly demonstrates that there exists a market
for tools in which both of the jaws are movable (see, e.g., FF3 A; ’7030
Decision, FF4 A)." (New Decision 14). Thus, the Patent Owner's argument
based on identification of an alternative solution is unpersuasive.

Argument 2
The Patent Owner asserts that the articulated reason for combining
Ogawa with Caterpillar to "minimize movement of the object as it is
grasped" lacks rational underpinnings because if "[t]he object is initially in
contact with the fixed stationary blade and the moving blade alone . . .
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pivot[s] to contact the object," then "[t]he object does not move at all when it
is grasped." (Req. 5-7, 14). This argument was also previously addressed
(New Decision 16-17). Specifically, the Board stated:
If only one of the blades is movable, the movable blade must
displace the object until it abuts against the non-movable blade
in order to grasp the object. Whereas such movement of the
object may be reduced by first abutting the non-movable blade
against the object prior to moving the movable blade, . . . such
positioning may not be attainable or desirable in all
circumstances.
(New Decision 17, emphasis added).
Moreover, as noted above with respect to Argument 1, the record is clear that
jaws, wherein one or both of the blades move, are well known in the art.
Thus, the Patent Owner's argument is unpersuasive.

Argument 3
The Patent Owner argues that in the New Decision, the Board
improperly dismissed statements of the Requester regarding the asserted
"long-felt need." (Req. 7–9). However, this assertion is meritless because
the Board already addressed this argument in detail (New Decision 21-22).

Argument 4
The Patent Owner argues that the Board improperly dismissed
evidence of copying, which includes the fact that the Requester was found
liable to the Patent Owner for trade secret misappropriation and that the
"misappropriated trade secrets of the Patent Owner used by Genesis to
design their jaw set were some of the design details used for the internal
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elements of the jaw set that is the subject of the present reexamination
proceeding." (Req. 9).
The trade secret argument was already addressed by the Board in the
New Decision, which explained that such vague assertions regarding use of
some unidentified "internal elements" of the jaw set do not persuasively
establish nexus between the misappropriated trade secrets and the claimed
invention (New Decision 22-23). The Patent Owner also argues in the
Request for Rehearing that "from a cursory inspection, it can be seen that
there are many similarities between the designs disclosed in the Genesis '718
patent and the design claimed in the Patent Owner's patent" (Req. 9).
However, such vague assertions of "many similarities" are inadequate to
demonstrate copying which
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed. Cir. 2003); direct evidence such
as disassembling a patented prototype, photographing its
features, and using the photograph as a blueprint to build a
virtually identical replica, see Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); or
access to, and substantial similarity to, the patented product (as
opposed to the patent), Cable Elec. Prods., Inc. v. Genmark,
Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985), overruled on other
grounds by, Midwest Indus., Inc. v. Karavan Trailers, Inc., 175
F.3d 1356, 1359 (Fed. Cir. 1999) (en banc).
Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004).

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Argument 5
Finally, the Patent Owner asserts that the Board's conclusion of
obviousness was based on impermissible hindsight (Req. 9–10). However,
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill [in the art] at the time the claimed invention
was made and does not include knowledge gleaned only from
applicant's disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
The Board's conclusion of obviousness set forth in the New Decision
derives from proper consideration of the knowledge disclosed in the prior art
of record and does not include knowledge gleaned only from the ’489 patent.
Reasons with rational underpinnings that support this conclusion are also set
forth. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

CONCLUSION
The Patent Owner's request to modify the New Decision is DENIED.

DENIED

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

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cc:

Patent Owner:
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222

Third Party Requestor:
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303