IN THE UNITED STATES PATENT AND TRADEMARK OFFICE. U.S. Pat. No. 5,544,417

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Inter Partes Review of: U.S. Pat. No. 5,544,417 Filed: October 20, 1994 Inventor: Atos, et al. Issued: August 13, 1996 Petition Filing Date: August 9, 2013 Trial Number: IPR For: MULTI-PURPOSE MOTOR MOUNTING SYSTEM FOR A STRING TRIMMER Corrected Petition Filed: August 22, 2013 Mail Stop PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA Submitted electronically via the Patent Review Processing System CORRECTED PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,544,417 UNDER 35 U.S.C. 311 et seq. AND 37 C.F.R et seq.

2 TABLE OF CONTENTS I. INTRODUCTION 1 II. MANDATORY NOTICES 3 A. Real Party-in-Interest 3 B. Related Matters 3 C. Notice of Counsel and Service 3 III. PAYMENT OF FEES 4 IV. REQUIREMENTS FOR INTER PARTES REVIEW 4 A. Grounds for Standing 4 B. Identification of Challenge and Relief Requested 5 1. Claims for Which Inter Partes Review is Requested 5 2. Prior Art on Which Challenge is Based 5 3. Statutory Grounds for Challenge 6 V. OVERVIEW OF THE 417 PATENT 6 A. Disclosure of the 417 Patent 6 B. Prosecution History of the 417 Patent 7 VI. BROADEST REASONABLE CONSTRUCTION 10 A. Fixedly Secure 11 B. Motor Mounting Assembly 11 C. Groove 12 D. Bracket Member 12 VII. LEVEL OF ORDINARY SKILL IN THE ART 13 VIII. SUPPORTING EVIDENCE AND MATERIAL FACTS 14 A. Statement of Material Facts Laverick GB ( L 665 ) (Ex. 1009) Mack U.S. Patent No. 4,498,237 ( M 237 ) (Ex. 1010) Anderson U.S. Patent No. 4,603,478 ( A 478 ) (Ex. 1011) 15 B. Supporting Evidence 15 ii

3 IX. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE 16 A. L 665 (Ex. 1009) Reference Challenges Claim 5 Challenges based on L Claim 1 Challenges based on L Claim 2 Challenges based on L Claim 4 Challenges based on L Claim 7 Challenges based on L Claim 10 Challenges based on L Claim 12 Challenges based on L Claim 13 Challenges based on L Claim 14 Challenges based on L Claim 16 Challenges based on L Claim 17 Challenges based on L B. M 237 (Ex. 1010) Reference Challenges Claim 1 is Anticipated by M 237 and Obvious over M Claim 2 is Anticipated by M 237 and Obvious over M Claim 4 is Anticipated by M 237 and Obvious over M Claim 12 is Anticipated by M 237 and Obvious over M Claim 13 is Anticipated by M 237 and Obvious over M Claim 14 is Anticipated by M 237 and Obvious over M Claim 16 is Anticipated by M 237 and Obvious over M Claim 17 is Anticipated by M 237 and Obvious over M X. CONCLUSION 60 iii

4 I. INTRODUCTION Positec USA, Inc. and RW Direct, Inc. (collectively, Petitioner ) respectfully request the United States Patent and Trademark Office ( Office ) to: (a) grant an inter partes review under 35 U.S.C. 311 et seq. and 37 C.F.R et seq. and (b) cancel as unpatentable claims 1, 2, 4, 5, 7, 10, 12-14, 16, and 17 of U.S. Patent 5,544,417 ( the 417 Patent, attached as Exhibit 1008) 1 under 35 U.S.C. 102 and 103 in light of the prior art set forth herein. The apparent novelty of the 417 Patent is a motor mounting plate assembly for an electric tool in which the motor resides in a groove in the housing and in which the motor does not touch any portion of the housing interior. Claims 1, 2, 4, 5, 7, 10, and 12-14, of the 417 Patent are directed to the motor mounting plate assembly. Claims 16 and 17 are directed to a method for assembling an outdoor power tool. All claimed embodiments are directed to a motor supported within a first housing half and an identical second housing half, the two housing halves being securable to one another. The assembly includes a planar plate member and a U-shaped bracket member, wherein the plate member is secured to the motor. Each housing half contains a groove formed about the interior thereof, and each 1 References to Exhibits herein are in the form Ex. [].

5 requires the plate member to be insertable into the groove, thereby allowing the motor to be freely supported within the housing. As demonstrated by the references herein, such a motor mounting assembly was not novel and nonobvious at the time of the earliest effective filing date of the 417 Patent. Indeed, similar motor mounting plate assemblies were described in several U.S. and foreign references long before the 417 Patent. And, one reference in particular was overcome during prosecution of the 417 Patent only because the Patent Owner wholly mischaracterized the reference, thus warranting an independent review thereof and its inclusion herein as a basis for invalidating the challenged claims. The references provided herein likewise render obvious the challenged claims. The references teach the desire for, and the need to, reduce vibrations from the motor by minimizing contact with the housing, and to simplify the construction and reduce costs by reducing the number of components. Therefore, it would have been obvious to try eliminating additional support structure (e.g., ribs) within the housings of the prior art that contact the motor to achieve the goal of freely supporting the motor on the mounting plate as set forth in the challenged claims. In short, for the reasons set forth more fully herein, claims 1, 2, 4, 5, 7, 10, 12-14, 16, and 17 of the 417 Patent should be canceled as unpatentable. 2

6 II. MANDATORY NOTICES A. REAL PARTY-IN-INTEREST Pursuant to 37 C.F.R. 42.8(b)(1), Positec USA, Inc. and RW Direct, Inc. are the real parties-in-interest for Petitioner. B. RELATED MATTERS Pursuant to 37 C.F.R. 42.8(b)(2), on information and belief, other judicial and administrative matters that could likely affect, or be affected by, a decision in this proceeding include the following: the patent infringement lawsuit involving the 417 Patent, styled Black & Decker Inc. et al. v. Positec USA, Inc. et al., No. 1:2013-cv (N.D. Ill. filed Apr. 24, 2013). Petitioner is a party to this lawsuit. C. NOTICE OF COUNSEL AND SERVICE Pursuant to 37 C.F.R. 42.8(b)(3)-(4) and 42.10(a), Petitioner provides the following designation of counsel: Lead Counsel Back-Up Counsel Robert H. Eichenberger Robert J. Theuerkauf (Reg. No. 42,509) (Reg. No. 55,843) rhe@middletonlaw.com rjt@middletonlaw.com Postal and Hand-Delivery Address: Middleton Reutlinger, 401 South Fourth Street, Suite 2600, Louisville, Kentucky Telephone: Facsimile: Pursuant to 37 C.F.R (b), a Power of Attorney accompanies this Petition. Service of any documents via hand-delivery or mailed documents may be made at the postal address designated above. 3

7 III. PAYMENT OF FEES Eleven claims are being challenged. Therefore, pursuant to 37 C.F.R and 42.15(a)(1)-(4), the undersigned submits herewith a credit card payment in the amount of $23,000.00, which includes the request fee of $9, and pre-payment of the $14, post-institution fee 2. IV. REQUIREMENTS FOR INTER PARTES REVIEW As set forth below and pursuant to 37 C.F.R , each requirement for inter partes review of the 417 Patent is satisfied. A. GROUNDS FOR STANDING Petitioner hereby certifies that the 417 Patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 417 Patent on the grounds identified herein. Specifically, (1) Petitioner is not the owner of the 417 Patent; (2) Petitioner has not filed a civil action challenging the validity of the claims of the 417 Patent; (3) this Petition is filed less than one year after the date on which the Petitioner, the Petitioner s real party-in-interest, or a privy of the Petitioner was served with a complaint alleging infringement of the 417 Patent; (4) the estoppel provisions of 2 Effective March 19, 2013, the Inter Partes Review Request fee structure was amended to include a request fee and a post-institution fee. See Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212, 4224, 4275, 4291 (Jan. 18, 2013). 4

8 35 U.S.C. 315(e)(1) do not prohibit this inter partes review; and (5) this Petition is being filed after the date that is nine months after the date of the grant of the 417 Patent or the date of termination of any post-grant review thereof. B. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED 1. Claims for Which Inter Partes Review is Requested Petitioner requests that inter partes review be granted and that each of claims 1, 2, 4, 5, 7, 10, 12-14, 16, and 17 be canceled as invalid under 35 U.S.C. 102 or 103, as set forth in more detail herein. 2. Prior Art on Which Challenge is Based Petitioner requests inter partes review based on the following references 3 : Exhibit Reference Abbrev Great Britain GB , entitled Vegetation cutters, by Laverick, published September 14, 1983, filed January 8, 1982, and commonly owned by the patent owner of the 417 Patent U.S. Patent No. 4,498,237, entitled Hair trimmer, issued to Mack et al. on February 12, 1985 and filed January 18, U.S. Patent No. 4,603,478, entitled Trimmer with adjustable handle, issued to Anderson on August 5, 1986 and filed August 13, 1984 L 665 M 237 A The abbreviation will be used herein whenever referring in general to each prior art reference. Actual citations to each reference herein will be to the Exhibit number occupied by said reference, in the form Ex. 10[--] at [pinpoint citation]. 5

9 3. Statutory Grounds for Challenge The statutory grounds under 35 U.S.C. 102 and 103 on which each challenge is based are set forth in summary fashion in the table below: Ground Claims Invalidity Grounds A 5 Anticipated under 102(b) by L 665 B 1, 4, 5, 7, 12, 13, 16 Obvious under 103(a) over L 665 in view of A 478 C 1, 2, 4, 5, 7, 10, 12-14, 16, 17 Obvious under 103(a) over L 665 in view of M 237 D 1, 4, 5, 7, 12, 13, 16 Obvious under 103(a) over L 665 in view of M 237 and A 478 E 1, 2, 4, 12, 13, 14, 16, 17 Anticipated under 102(b) by M 237 F 1, 2, 4, 12, 13, 14, 16, 17 Obvious under 103(a) over M 237 V. OVERVIEW OF THE 417 PATENT A. DISCLOSURE OF THE 417 PATENT The focus of the 417 Patent is to mount the motor in a groove in the housing without the need for the motor to touch any other portion inside the housing. This is emphasized throughout the 417 Patent, including in the Summary of the Invention (Ex at 2:44-51), in the Abstract, and also in the fact that the 417 Patent distinguishes the prior art references that include ribs which provide additional support for a motor within a motor housing. Id. at 1:41-2:3. Although embodiments of the 417 Patent are directed to lawn trimmers, the 417 Patent expressly states it is applicable with little or no modification, to virtually any form of small electric tool or appliance which includes an internally mounted electric motor. Id. at 6:66-7:4. 6

10 Figures 3, 4, and 5 of the 417 Patent are reproduced below. The 417 Patent discloses a motor mounting plate assembly 38 for a string trimmer including a planar plate member 40 secured to a motor 36. Id. at 4: All claimed embodiments described in the 417 Patent are directed to a motor 36 supported within a housing. Id. at 4:3-13. The interior of the housing has a groove 26a, 26b. Id. at 4: The plate member 40 is insertable into the grooves 26a, 26b. Id. at 5: In some embodiments, the groove is formed by the undersurface 37 of a shoulder portion 28 and the upper edge surfaces 34 of each of a plurality of spaced apart, vertically protruding interior shoulder portions 32. Id. at 4: B. PROSECUTION HISTORY OF THE 417 PATENT The application for the 417 Patent was filed on October 20, 1994 with 20 initial claims. See 417 U.S. File History excerpts (Ex. 1012). Application claims 8, 9, 12, and 16 (issued claims 12, 13, 1, and 16, respectively) were rejected under 35 U.S.C 102(b) as being anticipated by Mack et al. (M 237). See Ex at 7

11 35 (First Office Action, p. 3). M 237 discloses a motor mounting assembly for an electric trimmer as follows: Ex at 3:5-24 (emphasis added). As indicated by the underlined text above, M 237 explicitly and unambiguously describes the flat portion (i.e., the plate) as being inserted into the groove between the inner wall extensions. This is further illustrated in annotated Figure 3 below: 8

12 In rejecting the application claims, the Examiner correctly noted: Mack et al. shows the claimed power tool. The statement of intended use (i.e. for trimming vegetation) adds no structure to and is of no patent import in the claimed power tool. See Ex at 35 (First Office Action, p. 3). This is consistent with the fact that the 417 Patent directs its teachings to virtually any form of small electric tool or appliance which includes an internally mounted electric motor. Ex at 7:2-4. Yet, in order to overcome M 237, the Applicant argued that the motor is not fixedly secured to yoke 43, and cannot be supported by the flat portion 45 because the Applicant argued the flat portion 45 is not sandwiched between the wall extensions 62a and 62b on the inner wall 12a: See Ex at 49 (Applicant s Response to First Office Action, p. 9) (emphasis added). Nothing short of pure conjecture supports such an assumption. In fact, as shown in the underlined text above, for every argument it made to overcome M 237 with regard to the mounting plate assembly limitation, the Applicant never affirmatively cited any real support, but instead argued only that it appears that 9

13 Applicants understanding is correct. These mischaracterizations squarely contradicted the explicit language of M 237, and inaccurately portrayed the M 237 reference. When properly viewed, M 237 anticipates the challenged claims. VI. BROADEST REASONABLE CONSTRUCTION Claims are generally given their ordinary and customary meaning as would be understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 2005) (en banc). In an inter partes review, the claims of an unexpired patent are given the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). 4 The following claim construction 5 is provided to aid the Board. All claim terms not 4 Other forums, such as U.S. District Courts, require different standards of proof and utilize different claim interpretation rules that are not applied by, or applicable to, the Patent Office for inter partes reviews. Therefore, any interpretation or construction of the challenged claims in this Petition is made solely pursuant to the broadest reasonable construction rule applicable to this Petition, and shall not be viewed as constituting, in whole or in part, Petitioner s interpretation or construction under any other forum s rules or standards. 5 Petitioner s claim construction herein should not be taken to mean that Petitioner agrees or admits that any claim element of the challenged claims should receive the benefit of the doctrine of equivalents; or that Petitioner is precluded from propounding alternative claim constructions; or that Petitioner agrees or 10

14 specifically addressed in this section have been accorded their broadest reasonable construction in light of the patent specification. A. FIXEDLY SECURE Claims 1, 2, 5, 7, 10, 12, 13, 14, 16, 17, require two components (e.g., the motor and the plate, the bracket and the plate, the motor and the bracket, etc.) to be fixedly secured and/or coupled to one another. However, the phrases fixedly secured or fixedly coupled do not appear anywhere in the written description. Assuming this omission does not render the claims indefinite, the broadest reasonable construction of the term fixedly secure would therefore be securely placed or fastened. B. MOTOR MOUNTING ASSEMBLY Claim 1 includes the term motor mounting assembly. However, challenged claim 2 (depending from claim 1), includes the term said mounting plate assembly, which has no antecedent basis. The written description includes the additional term motor mounting plate assembly. See Ex at 4: Nonetheless, giving the claim term its broadest reasonable construction in light of the written description, the Petitioner proposes that the terms motor mounting assembly, mounting plate assembly, and motor mounting plate assembly believes that the claims at issue are amenable to a meaningful construction or satisfy the requirements of 35 U.S.C

15 mean the same thing i.e. an assembly of two or more components, including a plate, that is used to mount a motor. This meaning is also consistent with the appearance of the term mounting plate assembly in the challenged claims 5, 7, 10, 12-14, 16, and 17. C. GROOVE Each of the challenged independent claims includes the term groove. The written description of the 417 Patent describes that a groove may be formed by two shoulder portions protruding transversely of the interior walls of the housing halves. See Ex at 4: When the housing halves are joined together, a groove is formed in the interior of the housing halves. Id. Further, Figure 3 shows a channel structure. Therefore, the written description describes the formation of a groove or channel, and in light of the written description, Petitioner proposes that the term groove be given its broadest reasonable construction, i.e. a channel or a portion formed by two shoulder portions protruding transversely of the interior walls. D. BRACKET MEMBER Challenged claims 2, 10, 14, and 17 recite a bracket member. Claim 14 recites a U-shaped bracket member. See Ex at 7:54-55, 9:11, 9:51, and 10:34. The written description describes a U-shaped bracket member with a pair of transversely extending arm portions that support the motor. Id. at 4: Petitioner proposes that the term bracket member be given its broadest 12

16 reasonable construction in light of the specification of the 417 Patent, i.e. a member that is designed to support a component. VII. LEVEL OF ORDINARY SKILL IN THE ART The level of ordinary skill in the art is evidenced by the references. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The prior art applied herein demonstrates that one of ordinary skill in the art, at the time of the 417 Patent, was aware of the problems that motor mounting assemblies have, including reducing the vibrations from the motor by minimizing contact with the housing (e.g., Ex at 1:39-42) and simplifying the construction and reducing costs by reducing the number of components (e.g., Ex at 2:43-56; Ex at 1:39-42; Ex at 1:17-20). A person of ordinary skill would have knowledge of the associated general technology, including background knowledge of improvements to the relevant components. See, e.g., KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), at 401, 407, 414, 418, 421, and 427. This person would have knowledge of motor mounting assemblies including a motor housing with two identical halves that may be secured to one another (e.g., Ex. 1010, Fig. 3); a motor secured to a plate, with the plate inserted into a groove on the interior surface of the housing (e.g., Ex. 1011, Fig. 2; Ex. 1010, Fig. 3); holding motors with additional support structures including ribs protruding from the interior surface of the housing (e.g., Ex. 1009, 2:22-27); securing the motor with a U-shaped portion (e.g., Ex. 1010, 13

17 3:9-14); and including a central aperture in the mounting plate so as to allow a shaft of the motor to pass through and rotationally drive a cutting implement (e.g., Ex. 1011, Fig. 2). The person of ordinary skill would also have knowledge of freely supporting motors within the housing without the need for ribs (e.g., Ex. 1010, Fig. 3, 3:9-14, 3:18-24). VIII. SUPPORTING EVIDENCE AND MATERIAL FACTS A. STATEMENT OF MATERIAL FACTS Pursuant to 37 C.F.R 42.22, Petitioner submits the following statement of material facts: 1. Laverick GB ( L 665 ) (Ex. 1009) L 665 discloses a filament trimmer for cutting vegetation. Ex at Abstract. L 665 discloses a body with two mating parts securable to each other. Ex at 1:21-26, 1: L 665 discloses internal grooves on the internal surface of the body portions. Ex at 2: Flanges on an end cap are insertable into the internal grooves, and the end cap is fixedly secured to a motor. Id. This assembly supports the motor within the body. Id. 2. Mack U.S. Patent No. 4,498,237 ( M 237 ) (Ex. 1010) M 237 discloses a motor mounting assembly comprising two housing sections securable to each other. Ex at 2: M 237 discloses inner wall extensions of the housing sections that form a circumferential groove therebetween. Ex at 2: M 237 discloses a groove positioned in the 14

18 housing such that when the two housing sections are secured together the groove is disposed within a common plane to effectively form a generally circumferential groove. Ex. 1010, Fig. 3. M 237 discloses a flat portion insertable in the groove. Ex at 3: M 237 discloses a motor that is positioned and supported in the housing sections by being secured to the flat portion, which is inserted into the groove. Id. M 237 also discloses a U-shaped portion secured to the motor and the flat portion. Ex at 3:9-14. M 237 shows that the engine does not contact any other portion of the housing halves other than the groove. Ex. 1010, Fig Anderson U.S. Patent No. 4,603,478 ( A 478 ) (Ex. 1011) A 478 discloses a motor housing comprising two sections securable to each other. Ex at 6: A 478 discloses a groove positioned in the motor housing such that when the two sections are secured together the groove is disposed within a common plane to effectively form a generally circumferential groove. Ex. 1011, Fig. 2. A 478 discloses a planar plate member placed in the circumferential groove formed within the motor housing. Id. A 478 discloses a motor supported within the motor housing by the planar plate member. Id. A 478 shows that the engine does not contact any other portion of the housing other than the groove. Id. B. SUPPORTING EVIDENCE Pursuant to 37 C.F.R (b)(5), the supporting evidence relied upon to support the challenge and the relevance to the challenge raised, including 15

19 identifying specific portions of the evidence that support the challenge, are provided in Section IX below. An Appendix of Exhibits is attached. IX. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE Pursuant to 37 C.F.R (b)(4)-(5), the following charts demonstrate that the challenged claims are unpatentable. To provide a more succinct and easyto-read format, each chart is dedicated to a particular claim, and shows the pinpoint citations to the references for each 102 and 103 invalidity bases. For ease of reference, the various claim limitations have been labeled with a designator letter, in the form of [a], [b], etc. With reference to the 103 challenges below, the Supreme Court clarified the standard for what types of inventions are patentable under 35 U.S.C See KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In particular, inventions arising from ordinary innovation, ordinary skill, or common sense should not be patentable. Id. at 400, 403-4, , Restated, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 416. As described herein, because they simply combine elements well-known in the prior art and yield no more than one of ordinary skill in the art would expect from such a combination, the challenged claims are rendered obvious by the cited references. 16

20 After the Supreme Court s decision in KSR, the USPTO issued new Examination Guidelines 6 which were updated again in According to the Examination Guidelines, the Supreme Court particularly emphasized the need for caution in granting a patent based on the combination of elements found in the prior art. Id. The Examination Guidelines state that the focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge. Id. at 57,527. For instance, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. To a person of ordinary skill in the art at the time of the invention, the challenged claims represent solutions that would have been obvious to try with predictable results. Id. at 416. The motivation and/or incentive to combine the 6 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in view of the Supreme Court Decision in KSR Int l Co. v. Teleflex Inc. 72 Fed. Reg. 57,526 (Oct. 10, 2007) ( Examination Guidelines ). 7 Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v. Teleflex. 75 Fed. Reg. 53,643 (Sept. 1, 2010). 17

21 references discussed herein could have come from many sources, including, but not limited to the published prior art references themselves, information about widely-known methods and products, the common field of technology of the references, and the teachings in the references directed to solving the motormounting problem that the 417 Patent was allegedly directed to solving. Indeed, [u]nder the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed[,] KSR, 550 U.S. at 402. After all, [a] person of ordinary skill is also a person of ordinary creativity, not an automaton. Id. at 421. As will be shown, the challenged claims are invalid under 35 U.S.C. 103 because they do nothing more than combine known techniques and apparatuses according to their known and ordinary uses to yield predictable results. KSR, 550 U.S. at 420. A. L 665 (EX. 1009) REFERENCE CHALLENGES The following detailed charts demonstrate that: (1) claim 5 is anticipated under 35 U.S.C. 102(b) by L 665; (2) claims 1, 4, 5, 7, 12, 13, and 16 are obvious under 35 U.S.C. 103(a) over L 665 in view of A 478; (3) claims 1, 2, 4, 5, 7, 10, 12-14, 16, and 17 are obvious over L 665 in view of M 237; and (4) claims 1, 4, 5, 7, 12, 13, and 16 are obvious over L 665 in view of M 237 and further in view of A

22 Of special relevance to the obviousness challenge under Section 103 with respect to L 665 in view of M 237 and A 478 is the fact that when a person alters a structure already known in the prior art by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 550 U.S. at 416. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417 (emphasis added). L 665 discloses a motor mounting assembly for string trimmers that includes a motor mounted on a plate and additionally supported using ribs. M 237 teaches that a motor for hair trimmers may be supported on a mounting plate in a groove without any additional support structures in the housing. A 478 suggests that an even larger motor such as the one for string trimmers may also be freely supported on a plate in a groove without additional support structures in the housing. As disclosed in the 417 Patent, the alleged invention was directed to simplifying the construction and reducing costs by reducing the number of components. Ex at 2: Consequently, the prior art references M 237 and A 478 would have motivated a person of ordinary skill to try to support the motor in L 665 by eliminating the additional support structures in the housing, including ribs, as taught by M 237 and suggested by A 478. The 417 Patent uses existing prior art elements according to their established functions, and the mere substitution of one element 19

23 for another known in the field did not yield more than a predictable result. A person of ordinary skill in the art would recognize that the extra supports needed in the commonly owned pre-existing invention disclosed in L 665 would be redundant and contrary to the stated desire of minimizing contact with the housing (e.g., Ex at 1:39-42), and simplifying the construction and reducing costs by reducing the number of components (e.g., Ex at 2:43-56; Ex at 1:39-42; Ex at 1:17-20). The motivation and/or incentive to combine L 665 with either A 478, or M 237, or with both, could have come from the disclosures therein to obtain predictable results. For example, one of ordinary skill in the art could have substituted groove 13 in L 665 (see Ex at 2:22-44) with the circumferential grooves formed by inner wall extensions 62a, 62b, as disclosed in M 237 (see Ex. 1010, Fig. 3), or with the groove B of A 478 (see Ex. 1011, Fig. 2). Likewise, one of ordinary skill in the art could have predictably substituted the flange 14/end cap 11 arrangement in L 665 (see Ex at 2:22-27) with the flat portion 45 of M 237 (see Ex. 1010, Fig. 3), or with the planar plate member A of A 478 (see Ex. 1011, Fig. 2). Also, one of ordinary skill in the art would have dimensioned the flat portion 45 of M 237 or the planar plate member A of A 478 so as to be insertable into the groove formed by the inner wall extensions 62a, 62b of M 237, or groove B of A 478, respectively, in order to freely support the motor within the 20

24 housing without contacting the interior of the housing (see Ex at 2:22-44; Ex. 1011, Fig. 2; Ex at 3:18-24, Fig. 3). Moreover, all three references are directed to motor mounting assemblies, and one of ordinary skill in the art would have readily recognized the advantage of the simplified plate/groove combination as disclosed in M 237 (see Ex at 3:9-14, Fig. 3) or in A 478 (see Ex. 1011, Fig. 2). Accordingly, as discussed herein, it would have been obvious to substitute the ribs in L 665 (see Ex at 2:22-44) with the plate/groove assembly disclosed in either M 237 or A 478. The limitations in dependent Claim 4 include shoulder portions, and one of ordinary skill in the art could have predictably partitioned one or more of the inner wall extensions 62a, 62b of M 237 (see Ex. 1010, Fig. 3) or the shoulder portions (the protruding inner wall extensions that form groove B) disclosed in A 478 (see Ex. 1011, Fig. 2) to satisfy the limitations of claim 4. Additionally, with reference to dependent claims 2, 10, 14, and 17, one of ordinary skill in the art could have been motivated by the teachings of M 237 to recognize the differences between a motor for a vegetation trimmer and a hair trimmer, and could have appropriately modified the U-shaped portion 51of M 237 to securely support the motor within the housing. It would have been obvious to one of ordinary skill in the art to include centrally disposed apertures in the plate member and the bracket member 21

25 to enable an armature shaft of the motor to pass through and connect to the cutting implement, as taught in M Claim 5 Challenges based on L 665 The following chart provides the prior art teachings showing that Claim 5 is Anticipated by L 665; Obvious over L 665 in view of A 478; Obvious over L 665 in view of M 237; and Obvious over L 665 in view of M 237 and A 478. Claim 5 [a] A line trimming apparatus for trimming vegetation, comprising: [b] a flexible cutting line; Anticipated by L 665 (Ex. 1009): L 665 discloses a vegetation cutter: This invention relates to vegetation cutters and components therefor and has particular reference to that class of cutters known as filament trimmers in which cutting is effected by a rapidly rotating length of filament which may be a monofilament. Abstract. Anticipated by L 665: L 665 discloses a flexible cutting line: A filament F is shown in L 665 Figure 1 reproduced below: [c] a holder for supporting at least a portion of the cutting line; Figure 1 (L 665) Anticipated by L 665: L 665 discloses a holder: A spool carrier 39 supports the filament F. Ex at 2:

26 Claim 5 [d] a motor for rotationally driving the holder and cutting line; [e] a housing enclosing at least a portion of the motor; Anticipated by L 665: L 665 discloses a motor for rotationally driving the holder and cutting line: motor comprises end caps 10 and 11 supported upon the ends of the laminated cores 12 of the motor. Ex at 2: The portion 3 is contoured internally to support a driving motor. Id. at 2: cutting is effected by a rapidly rotating length of filament which may be a monofilament. Abstract. Anticipated by L 665: L 665 discloses such a housing: According to the present invention, a filament cutter includes a body comprising mating parts which provide the handle, shaft and motor housing. Preferably, the body comprises two mating parts. Ex at 1: [f] a groove formed on an internal surface of the housing; and The portion 3 is contoured internally to support a driving motor.. Id. at 2: Anticipated by L 665: L 665 discloses internal grooves 13 on the internal surfaces of portions 3 and 4. Ex at 2: The internal configuration of portion 4 is similar to that of portion 3, there being an internal groove similar to groove 13 and an internal rib corresponding with rib 15. Id. at 2: A portion of annotated L 665 Figure 2 is reproduced below: GROOVE PLATE Fig. 2 (L 665) Obvious over L 665 (Ex. 1009) in view of A 478 (Ex. 1011): A 23

27 Claim 5 portion of annotated A 478 Figure 2 is reproduced below: portion of Fig. 2 (A 478) As shown in A 478 Figure 2 above, a planar plate member A placed in a circumferential groove B, where groove B is formed by at least one upper and at least one lower portion protruding outwardly from the interior surface wall. Obvious over L 665 (Ex. 1009) in view of M 237 (Ex. 1010): Annotated M 237 Figure 3 is reproduced below: 24

28 Claim 5 Fig. 3 (M 237) [g] a mounting plate assembly adapted to be fixedly connected to a portion of the motor and partially inserted into said groove such that said mounting plate assembly supports said motor within said housing. As shown in M 237 Figure 3 above, inner wall extensions (or shoulders) 62a, 62b on the inner wall 17a form a circumferential groove. Ex at 3: Anticipated by L 665: Flanges 14 are located in internal grooves 13. Flanges 14 are connected to end cap 11 of the motor. Ex at 2: Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], A 478 discloses a planar plate member A with a motor mounted onto it, wherein plate member A is placed in a circumferential groove B formed within a motor housing 14. Obvious over L 665 in view of M 237: The flat portion 45 is fixedly secured to motor 25: A U-shaped portion 51 of the motor mounting yoke 43 engages the housing 26 of the motor 25. The yoke 43 is formed from a spring grade wire and has opposed legs 55a, 55b extending forwardly on opposite sides of the motor 25 and through opposite slots 56a, 56b, respectively, in the flat portion 45. Ex at 3:9-14. The motor 25 is positioned and supported against rotation by the snug fit of the bearing portion 27 in the aperture 47, tension on the yoke 43 and the sandwiching of the flat portion 45 between inner wall extensions 62a, 62b on inner wall 12a and opposing wall extensions (not shown) on inner wall 17b. Id. at 3: Claim 1 Challenges based on L 665 The following chart provides the prior art teachings showing that Claim 1 is Obvious over L 665 in view of A 478; Obvious over L 665 in view of M 237; and Obvious over L 665 in view of M 237 and further in view of A 478. Claim 1 [a] An outdoor L 665 discloses an outdoor power tool: This invention relates 25

29 Claim 1 power tool for trimming vegetation, comprising: [b] a first housing section; [c] a second housing section securable to said first housing section; [d] each of said first and second housing sections including an interior surface wall; [e] each of said first and second housing sections including a to vegetation cutters and components therefor and has particular reference to that class of cutters known as filament trimmers in which cutting is effected by a rapidly rotating length of filament which may be a monofilament. Ex Abstract. L 665 discloses a first housing section: According to the present invention, a filament cutter includes a body comprising mating parts which provide the handle, shaft and motor housing. Preferably, the body comprises two mating parts. Ex at 1: As can be seen from Figures 1 and 2, the body of the embodiment comprises two clam-shell portions 1, 2 joined longitudinally and having, at their lower ends, as seen in the drawings, portion 3, 4 of generally cylindrical bulbous form and, at their upper ends handle portions 5. The handle portions 5 lie almost normal to the main part of the length of the portions 1, 2 whilst the portions 3, 4 are slightly inclined as can be seen from Fig. 2. Id. at 1: L 665 discloses such a second housing section: See [b] above. L 665 discloses that the housing sections have interior surface walls: The portion 3 is contoured internally to support a driving motor as described in the Specification of our copending Patent Application entitled Improvements in or relating to Electric Motors and Components Therefor. Ex at 2: The internal configuration of portion 4 is similar to that of portion 3, there being an internal groove similar to groove 13 and an internal rib corresponding with rib 15. Id. at 2: L 665 discloses: Portion 3 has an internal groove 13. 2: The internal configuration of portion 4 is similar to that of portion 3, there being an internal groove similar to groove 13. Ex at 2:

30 Claim 1 generally circumferential groove formed therein, Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], A 478 discloses a planar plate member A with a motor mounted onto it, wherein plate member A is placed in a circumferential groove B formed within a motor housing 14. Obvious over L 665 in view of M 237: As shown in M 237 Figure 3 in the discussion for Claim limitation 5[f], inner wall extensions (or shoulders) 62a, 62b on the inner wall 17a form a circumferential groove. Ex at 3: [f] each said groove further being positioned such that when said first and second housing sections are secured together said grooves are disposed within a common plane to effectively form a generally circumferential groove extending about substantially an entire length of M 237 Figure 3 shows that grooves formed by inner wall extensions 62a, 62b are positioned in each of the inner walls 17a, 17b of the first and second sections 12a and 12b such that when the two sections are secured together, the inner wall extensions 62a and 62b align with each other and the respective grooves are disposed within a common plane to effectively form a generally circumferential groove extending about substantially an entire length of each said interior surface wall of each of the two housing sections. L 665 discloses that Portion 3 has an internal groove 13. Ex at 2: The internal configuration of portion 4 is similar to that of portion 3, there being an internal groove similar to groove 13. Id. at 2: Obvious over L 665 in view of A 478: To permit periodic servicing of the motor 22 and general cleaning of the housing 14, the housing 14, like the collar 42, may be partially disassembled into two meridional sections substantially, for example, along the line 2-2 of FIG. 1. Ex at 6: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], groove B is positioned in motor housing 14 such that when the two disassembled meridional sections are secured together the grooves are disposed within a common plane to effectively form a generally circumferential groove extending about substantially an entire length of each said interior surface wall of each of the two housing sections. A 478 Figure 2 clearly shows that the motor does not directly contact any 27

31 Claim 1 each said interior surface wall of each of said first and second housing sections; [g] a motor disposed within said first and second housing sections; [h] a cutting implement operationally coupled to said motor so as to be drivable rotationally by said motor; and [i] a motor mounting assembly including [j] a plate member fixedly secured to said motor, portion of the interior surface wall. Obvious over L 665 in view of M 237: As shown in M 237 Figure 3 in the discussion for Claim limitation 5[f], grooves formed by inner wall extensions 62a, 62b are positioned in each of the inner walls 17a, 17b of the first and second sections 12a and 12b such that when the two sections are secured together, the inner wall extensions 62a and 62b align with each other and the respective grooves are disposed within a common plane to effectively form a generally circumferential groove extending about substantially an entire length of each said interior surface wall of each of the two housing sections. L 665 discloses a motor comprises end caps 10 and 11 supported upon the ends of the laminated cores 12 of the motor. Portion 3 has an internal groove 13 in which locate flanges 14 on end cap 11 and has an internal rib 15 that supports the motor in the vicinity of end cap 10. Ex at 2: The portion 3 is contoured internally to support a driving motor as described in the Specification of our co-pending Patent Application entitled Improvements in or relating to Electric Motors and Components Therefor. Id. at 2: L 665 discloses a Filament F. See L 665 Figure 1 in the discussion for Claim limitation 5[b]. It would have been obvious to one of ordinary skill in the art that filament F is operationally coupled to the motor so as to be drivable rotationally by the motor. The portion 3 is contoured internally to support a driving motor. Ex at 2: L 665 discloses a motor mounting assembly: See Ex. 1009, Figures 1 and 2; The assembly includes flanges 14 and internal ribs 15. L 665 discloses that flanges 14 are fixedly secured to the motor: A motor comprises end caps 10 and 11 supported upon the ends of the laminated cores 12 of the motor. Portion 3 has an internal groove 13 in which locate flanges 14 on end cap 11 Ex at 2:

32 Claim 1 [k] said plate member being of dimensions enabling said plate member to be inserted at least partially within said grooves within said first and second housing sections [l] such that said plate member is supported at a plurality of circumferential locations about said interior surface wall of each of said first and second Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], A 478 discloses a planar plate member A with a motor mounted onto it, wherein plate member A is placed in a circumferential groove B formed within a motor housing 14. Obvious over L 665 in view of M 237: The flat portion 45 is fixedly secured to motor 25: A U-shaped portion 51 of the motor mounting yoke 43 engages the housing 26 of the motor 25. The yoke 43 is formed from a spring grade wire and has opposed legs 55a, 55b extending forwardly on opposite sides of the motor 25 and through opposite slots 56a, 56b, respectively, in the flat portion 45. Ex at 3:9-14. L 665 discloses: Portion 3 has an internal groove 13 in which locate flanges 14 on end cap Ex at 2: Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], A 478 discloses a planar plate member A with a motor mounted onto it, wherein plate member A is placed in a circumferential groove B formed within a motor housing 14. Obvious over L 665 in view of M 237: As shown in M 237 Figure 3 in the discussion for Claim limitation 5[f], a flat portion 45 is of dimensions enabling the flat portion to be inserted within the circumferential grooves formed by inner wall extensions 62a, 62b positioned in each of the inner walls 17a, 17b of the first and second sections 12a and 12b. Anticipated by L 665: L 665 discloses: Portion 3 has an internal groove 13 in which locate flanges 14 on end cap Ex at 2: Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], A 478 discloses a planar plate member A with a motor mounted onto it, wherein plate member A is placed in a circumferential groove B formed within a motor housing 14. A 478 Figure 2 also shows a planar plate member A placed in a circumferential 29

33 Claim 1 housing sections to thereby support said motor fixedly relative to said first and second housing sections [m] without said motor contacting any portion of said interior surface wall of said first housing section or any portion of said interior surface wall of said second housing section. groove B, where groove B is formed by at least one upper and at least one lower portion protruding outwardly from the interior surface wall. Obvious over L 665 in view of M 237: As shown in M 237 Figure 3 in the discussion for Claim limitation 5[f], a flat portion 45 is of dimensions enabling the flat portion to be inserted within the circumferential grooves formed by inner wall extensions 62a, 62b positioned in each of the inner walls 17a, 17b of the first and second sections 12a and 12b. L 665 discloses: Portion 3 has an internal groove 13 in which locate flanges 14 on end cap 11 and has an internal rib 15 that supports the motor in the vicinity of end cap 10. Ex at 2: Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], groove B is positioned in motor housing 14 such that when the two disassembled meridional sections are secured together the grooves are disposed within a common plane to effectively form a generally circumferential groove extending about substantially an entire length of each said interior surface wall of each of the two housing sections. A 478 Figure 2 clearly shows that the motor does not directly contact any portion of the interior surface wall. Obvious over L 665 in view of M 237: As shown in M 237 Figure 3 in the discussion for Claim limitation 5[f], a flat portion 45 is of dimensions enabling the flat portion to be inserted within the circumferential grooves formed by inner wall extensions 62a, 62b positioned in each of the inner walls 17a, 17b of the first and second sections 12a and 12b. The motor 25 is positioned and supported against rotation by the snug fit of the bearing portion 27 in the aperture 47, tension on the yoke 43 and the sandwiching of the flat portion 45 between inner wall extensions 62a, 62b on inner wall 12a and opposing wall extensions (not shown) on inner wall 17b. Ex at 3:

34 Claim 1 M 237 Figure 3 shows that the motor is positioned so as not to contact any portion of the inner walls 17a, 17b of the first and second sections 12a and 12b. 3. Claim 2 Challenges based on L 665 The following chart provides the prior art teachings showing that Claim 2 is Obvious over L 665 in view of M 237. Claim 2 (Dependent on claim 1) [a] The outdoor power tool of claim 1, wherein said mounting plate assembly further comprises [b] a bracket member fixedly securable to said plate member and to said motor [c] such that said motor is supported fixedly relative to said plate member. L 665 discloses: This invention relates to vegetation cutters and components therefor and has particular reference to that class of cutters known as filament trimmers in which cutting is effected by a rapidly rotating length of filament which may be a monofilament. Ex Abstract. Obvious over L 665 in view of M 237: The flat portion 45 is fixedly secured to motor 25: A U-shaped portion 51 of the motor mounting yoke 43 engages the housing 26 of the motor 25. The yoke 43 is formed from a spring grade wire and has opposed legs 55a, 55b extending forwardly on opposite sides of the motor 25 and through opposite slots 56a, 56b, respectively, in the flat portion 45. Ex at 3:9-14. Obvious over L 665 in view of M 237: The motor 25 is positioned and supported against rotation by the snug fit of the bearing portion 27 in the aperture 47, tension on the yoke 43 and the sandwiching of the flat portion 45 between inner wall extensions 62a, 62b on inner wall 12a and opposing wall extensions (not shown) on inner wall 17b. Ex at 3:

35 4. Claim 4 Challenges based on L 665 The following chart provides the prior art teachings showing that Claim 4 is Obvious over L 665 in view of A 478; Obvious over L 665 in view of M 237; and Obvious over L 665 in view of M 237 and further in view of A 478. Claim 4 (Dependent on claim 1) [a] The outdoor power tool of claim 1, wherein said circumferential groove in said first housing section is formed by a first shoulder portion protruding outwardly from said interior surface wall of said first housing section about a portion of said interior surface wall; and L 665 discloses that groove 13 is formed by upper and lower shoulder portions protruding outwardly from the inner surface of the wall. See L 665 Figure 2 in the discussion for Claim limitation 5[f]. Obvious over L 665 in view of A 478: As shown in A 478 Figure 2 in the discussion for Claim limitation 5[f], a planar plate member A placed in a circumferential groove B, where groove B is formed by at least one upper and at least one lower portion protruding outwardly from the interior surface wall. [b] a plurality of second interior shoulder portions spaced apart from one another and also from said first shoulder portion, an upper edge surface of each one of said interior shoulder portions and an undersurface of said first shoulder portion defining an area representing said circumferential groove into which a portion of said plate member is inserted. Obvious over L 665 in view of M 237: M 237 discloses a laterally protruding shoulder portion, the inner wall extension 62a. Ex at 3: For L 665 disclosure, see [a] above. Obvious over L 665 in view of M 237: M 237 discloses an inner wall extension on inner walls 12a and 12b. It is clear that each interior shoulder portion has an upper edge surface and that the upper edge surfaces are generally aligned within a common plane (see M 237 Figure 3 in the discussion for Claim limitation 5[f],). 32