Al-Ko Kober, LLCv.Lippert Components Manufacturing, Inc.

Patent Trial and Appeal Board

Jun 6, 2014

13180671 (P.T.A.B. Jun. 6, 2014)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: June 6, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AL-KO KOBER, LLC
Petitioner

v.

LIPPERT COMPONENTS MANUFACTURING, INC.
Patent Owner
_______________

Case IPR2014-00213
Patent 8,235,455 B2
_______________

Before MICHAEL J. FITZPATRICK, BARRY L. GROSSMAN, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
AL-KO Kober, LLC (“Petitioner”) filed a Corrected Petition
requesting an inter partes review of claims 1-19 of U.S. Patent
No. 8,235,455 B2 (“the ’455 patent”). Paper 5 (“Pet.”). Lippert
Components Manufacturing, Inc. (“Patent Owner”) filed a Mandatory
Notice acknowledging ownership of the ’455 patent, but did not file a
Preliminary Response.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a):
THRESHOLD.—The Director may not authorize an
inter partes review to be instituted unless the Director
determines that the information presented in the petition
filed under section 311 and any response filed under
section 313 shows that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.
Upon consideration of the Corrected Petition, we determine that the
information presented does not show that there is a reasonable likelihood
that Petitioner would prevail in establishing the unpatentability of any of
claims 1-19. Accordingly, we deny the Corrected Petition and do not
institute an inter partes review of the ’455 patent.
A. Related Proceedings
Petitioner states that the ’455 patent is involved in a pending district
court case, Lippert Components Manufacturing, Inc. v. AL-KO Kober LLC,
No. 3:13-CV-697 (N.D. Ind.), filed on July 11, 2013. Pet. 1.
We note also that the ’455 patent and the patent at issue in IPR2014-
00211, between the same parties as in this proceeding, are divisional
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applications of application No. 12/683,332, filed on Jan. 6, 2010, now U.S.
Patent No. 8,016,343 (“the ’343 patent”). The ’343 patent also is the parent
of the patent involved in IPR2014-00313, U.S. Patent No. 8,573,666. The
parties involved in IPR2014-00313 are the same as the parties in this
proceeding, IPR2014-00213.
B. The ’455 Patent
The invention claimed in the ’455 patent relates, generally, to an
actuating mechanism for mobile living quarters, such as a motor home or
travel trailer. Ex. 1001, col. 1, ll. 18-23, col. 2, ll. 33-36.
The general structure of the retractable room is shown in Figures 4
and 5 of the ’455 patent, reproduced below.

Figures 4 and 5 from the ’455 patent.
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Mobile living quarters, such as a recreational vehicle, indicated
generally at 10, includes side wall 12. Side wall 12 defines aperture 14
through which slide-out room 16 extends and retracts. Ex. 1001, col. 3, ll.
32-37. Slide-out room 16 includes front wall 18, two side walls 20, 22
extending from front wall 18, ceiling 24 and floor 26. Id. at col. 3, ll. 37-39.
Actuation assemblies 28, 30 are mounted on side walls 20, 22 respectively.
Id. at col. 3, ll. 40-41. Each actuation assembly includes upper rack or
engagement member 32, lower rack or engagement member 34, and cover
36 defining a column which covers the mechanism that drives rack 32, 34.
Id. at col. 3, ll. 43-47.
As shown in Figures 2 and 3 from the ’455 patent, reproduced below,
a drive member in the form of splined torque shaft 52 is defined by
circumferentially spaced splines 56. Ex. 1001, col. 4, ll. 19-27. Splines 56
of shaft 52 are received in corresponding grooves in pinions 58, 60, which
mesh with gear racks 32, 34, respectively. Id. at col. 4, ll. 27-30. Roller 64
has bearing faces 66, 68. Id. at col. 4, ll. 36-37. Racks 32, 34 have
horizontally extending bearing surfaces defined by bearing faces 72, 74,
shaped complementary to the cross section of roller 64. Id. at col. 4, ll. 43-
46. A retention member, in the form of hooked extension 76, extends into a
longitudinally extending groove of rack 34. Id. at col. 4, ll. 52-54.
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Figures 2 and 3 from the ’455 patent.
C. Illustrative Claim
Claim 1, the sole independent claim, is illustrative of the claimed
invention:
1. An actuating mechanism for mobile living quarters
having a side wall and a slide-out room movable relative to the
side wall between a retracted position and an extended position
extended from the side wall, said actuating mechanism moving
said slide-out room between the extended and retracted
positions, said actuating mechanism comprising:
a first pair of engagement members mounted on said
slide-out room and moving with said slide-out room, each said
engagement member having a plurality of slots;
a pair of drive members, each drive member having
engagement features meshing with a corresponding engagement
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member, said drive members being driven together to move
said slide-out room between its retracted and extended
positions; and
an engagement means for restraining movement of said
drive members away from said engagement members.
D. References Relied Upon
Petitioner relies upon the following prior art references:
Patent Number Date Exhibit
Number
US 7,229,123 B2 (“Kunz ’123”) Jun. 12, 2007 Ex. 1002
US 6,948,754 B2 (“Huffman”) Sep. 27, 2005 Ex. 1003
US 7,607,365 B1 (“Courser”) filed Apr. 5,
2007; issued
Oct. 27, 2009
Ex. 1004
US 2005/0230989 A1 (“Nebel”) Oct. 20, 2005 Ex. 1005
US 7,614,675 B2 (“Kunz ’675”) filed Nov. 29,
2005; issued
Nov. 10, 2009
Ex. 1006
E. The Asserted Grounds
Petitioner asserts the following seven grounds of unpatentability:
Claims Challenged Prior Art Statutory
Basis
1 and 18 Kunz ’123 102
1-4, 6-12, and 15 Huffman 102
18 and 19 Kunz ’123 103
5 and 16 Huffman 103
2-12, 15, and 16 Kunz ’123 and Huffman 103
13 and 14 Kunz ’123, Huffman, Courser,
and Nebel
103
17 Huffman, Nebel, and
Kunz ’675
103
Pet. 12.
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II. ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see also Office Patent
Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14, 2012)
(Claim Construction); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). “[W]hen interpreting a claim, words of the claim are
generally given their ordinary and accustomed meaning, unless it appears
from the specification or the file history that they were used differently by
the inventor.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Any
special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. Id. Against this
background of general principles, we construe the claim terms in the ’455
patent.
Petitioner proposes specific construction only for the claim term “an
engagement means.” Pet. 13-14. Petitioner asserts that this phrase “should
not be interpreted as a means-plus-function limitation” under 35 U.S.C.
§ 112, ¶ 6.
1
Id. at 13. Petitioner asserts this phrase should be “interpreted
according to its plain and ordinary meaning as an engagement element, i.e.,

1
The change creating subsections (a) to (f) in Section 112 does not apply to
the ’455 patent. The amendment of Section 112 by Pub. L. No. 112–29 was
effective upon the expiration of the one-year period beginning on September
16, 2011, and applicable to any patent application that is filed on or after that
effective date, Pub. L. No. 112–29, § 4(e), Sept. 16, 2011, 125 Stat. 297.
The application on which the ’455 patent is based was filed on July12, 2011.
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an element that interlocks the drive members with the engagement
members.” Id. at 14.
Section 112, ¶ 6 allows a patentee to express a claim limitation as “a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof.” Section 112, ¶ 6 also
provides that claim limitations expressed in this manner “shall be construed
to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.” This provision applies, however,
“only to purely functional limitations that do not provide the structure that
performs the recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311
(Fed. Cir. 2005) (en banc).
The use of the term “means,” as in the claims of the ’455 patent,
triggers a rebuttable presumption that § 112, ¶ 6 governs the construction of
the claim term. Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649
F.3d 1350, 1356 (Fed. Cir. 2011). Although “the terms ‘means’ and ‘means
for’ have become closely associated with means-plus-function claiming”
(id.), the focus of the analysis is not solely on the word “means” or the
phrase “means for,” but on whether the claim, as properly construed, recites
sufficiently definite structure to avoid the ambit of § 112, ¶ 6. Personalized
Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir.
1998); see also Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28
(Fed. Cir. 1997) (“[W]here a claim recites a function, but then goes on to
elaborate sufficient structure, material, or acts within the claim itself to
perform entirely the recited function, the claim is not in means-plus-function
format,” even if the claim uses the term “means.”).
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Because the clause uses the word “means,” we start with the
rebuttable presumption that § 112, ¶ 6 governs the construction of the claim
term. Inventio, 649 F.3d at 1356; TriMed, Inc. v. Stryker Corp., 514 F.3d
1256, 1259 (Fed. Cir. 2008) . The presumption is overcome when the
limitation further recites sufficient structure for performing the described
functions in their entirety. Id. “Sufficient structure exists when the claim
language specifies the exact structure that performs the function in question
without need to resort to other portions of the specification or extrinsic
evidence for an adequate understanding of the structure.” Id. at 1259-60.
We construe the function of a means-plus-function limitation to
include the limitations contained in the claim language, and only those
limitations. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1113 (Fed. Cir. 2002). The function recited in claim 1 is “restraining
movement of said drive members away from said engagement members.”
Petitioner asserts that “[t]he use of the term ‘an engagement’ to
modify the term ‘means’ in claim 1 provides sufficient structure for carrying
out the claimed function of ‘restraining movement of said drive members
away from said engagement members.’” Pet. 13. There is no persuasive
evidence that the term “engagement” is a structural term. There also is no
persuasive evidence that, even if the term “engagement” is structural, it
defines sufficient structure for carrying out the claimed function of
“restraining movement of said drive members away from said engagement
members.”
The word “engagement” has the following dictionary definitions:
1. The act of engaging or the state of being engaged.
. . .
3. Something that serves to engage; a pledge.
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. . .
7. The condition of being in gear.
The American Heritage Dictionary of the English Language, Fourth Edition
(2000).
2
None of these definitions suggests the term “engagement” defines
sufficient structure for performing, in its entirety, the described functions
recited in claim 1 to rebut the presumption that § 112, ¶ 6 applies.
A modifier of the term “means” may, in some instances, be a
structural term, but there is no persuasive evidence that the term
“engagement” is a structural term in claim 1. Compare Envirco Corp. v.
Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (finding that
a claim’s recitation of a “baffle means” overcame the § 112, ¶ 6 presumption
because “the term ‘baffle’ itself imparts structure”), with Unidynamics Corp.
v. Automatic Prods. Int’l, Ltd., 157 F.3d 1311, 1319 (Fed. Cir. 1998)
(holding that the claim language “spring means tending to keep the door
closed” invokes § 112, ¶ 6, notwithstanding the recitation of “spring,” which
is structural language). See also Baran v. Med. Device Techs., Inc., 616 F.3d
1309, 1317 (Fed. Cir. 2010) (holding that the phrase “release means for
retaining” included the functions of both releasing and retaining, and that the
fact the word “release” preceded and modified the “means for” clause did
not change the means-plus-function interpretation of the claim); Signtech
USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (construing
“ink delivery means” to be equivalent to “means for ink delivery” because
“ink delivery” was purely functional language).

2
Available at http://www.thefreedictionary.com/engagement (last visited
May 2, 2014).
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Petitioner does not direct us to evidence in the Specification or
elsewhere that persuades us that the phrase “an engagement” recites
sufficient structure to remove it from the ambit of § 112, ¶ 6. Petitioner does
not identify any specific structure discussed in the Specification or shown in
the drawings that is the asserted engagement “structure.” Petitioner refers to
“hooked extension 76 and groove 78,” which Petitioner identifies as “one of
the structures performing the function of restraining movement of the drive
members away from the engagement members.” Pet. 14-15 n.2. As we
have interpreted the means-plus-function clause, hooked extension 76 and
groove 78 are part of the structure corresponding to the claimed “means.”
Being one of the structures performing the claimed function, or being part of
the structure for performing the claimed function, is not a proper
construction of the corresponding structure in the Specification for
performing the claimed function. Petitioner’s reference to hooked
extension 76 and groove 78 is not persuasive that the phrase “an
engagement” is structural.
Petitioner also asserts, without citation of supporting evidence, that
the term “engagement” is “commonly understood to mean the act of
engaging, i.e., interlocking or meshing.” Pet. 14. The “act of engaging,”
however, is functional, not structural. Also, there is no evidence that “the
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act of engaging” requires interlocking or meshing, as proposed by
Petitioner.
3

Finally, Petitioner refers to the prosecution history and co-pending
district court case to support the assertion that the “engagement means” is
structural, not functional. Pet. 14. Petitioner cites no evidence to establish
these asserted facts. Neither the prosecution history, nor the referenced case
documents are exhibits in this proceeding, and, thus, they are not evidence
that is before the Board. 37 C.F.R. § 42.63(a) (“Evidence consists of
affidavits, transcripts of depositions, documents, and things. All evidence
must be filed in the form of an exhibit.”); see also In re Schulze, 346 F.2d
600, 602 (CCPA 1965) (“Argument in the brief does not take the place of
evidence in the record.”).
Accordingly, for purposes of this decision, based on the totality of
facts and law discussed above, we construe the term “an engagement means
for restraining movement of said drive members away from said engagement
members” under § 112, ¶ 6 to cover the corresponding structure, material, or
acts described in the Specification, and equivalents thereof.
We turn to the Specification to determine the corresponding structure,
material, or acts for performing the claimed function, which is engaging and
“restraining movement of said drive members away from said engagement

3
Petitioner proposes that “an engagement means” should be interpreted
according to its plain and ordinary meaning as “an engagement element, i.e.,
an element that interlocks the drive members with the engagement
members.” Pet. 14 (emphasis added). Without any explanation, this
construction requires interlocking but omits the alternative meaning of
“meshing” that is acknowledged by Petitioner (“‘engagement’ is commonly
understood to mean the act of engaging, i.e., interlocking or meshing”). Id.
(emphasis added).
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members.” The structure disclosed in the written description of the
specification is the corresponding structure only if the written description of
the specification or the prosecution history clearly links, or associates, that
structure to the function recited in a means-plus-function claim limitation.
B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
We recognize that structural limitations from the written description that are
unnecessary to perform the claimed function cannot be imported into the
claim. Welker Bearing Co. v. PhD, Inc., 550 F.3d 1090, 1097 (Fed. Cir.
2008) (citing Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225,
1233 (Fed. Cir. 2001)). Reviewing the Specification, we find clear and
unambiguous reference to the structure for the means for “restraining
movement of said drive members away from said engagement members.”
As described in the Specification, “[t]he engagement means restrains
movement of the drive members (the pinions 60 and 58) from the
engagement members (the racks 32 and 34).” Ex. 1001, col. 4, ll. 50-52.
The Specification clearly links or associates the “engagement means” to the
function recited in the means-plus-function claim limitation. Thus, whatever
structure corresponds to the “engagement means” is also the corresponding
structure for the means-plus-function claim limitation.
As stated in the Specification, roller 64 and bearing surfaces 72, 74 of
engagement members or gear racks 32, 34 “form part of an engagement
means maintaining a fixed predetermined distance 81 between the racks 32,
34 and their respective pinions 60, 58.” Ex. 1001, col. 4, ll. 46-49 (emphasis
added). The elements that are part of the structure that maintains a fixed
distance between racks 32, 34 (engagement members) and their respective
pinions 60, 58 (drive members) (see Ex. 1001, col. 4, ll. 50-52) also are part
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of the structure that restrains movement of the drive members away from the
engagement members, as required by the means-plus-function claim
limitation. The Specification also states “bearing faces [72, 74] will, of
course, be shaped complementary to the cross section of the roller.” Id. at
col. 4, ll. 45-46.
As further explained in the Specification, hooked extension 76
extends from bearing block 54 into longitudinally extending groove 78 (Fig.
2) of rack 34. Id. at col. 4, ll. 53-55. Hooked extension 76 is covered by
low friction, plastic shoe 80, which rides in groove 78 as the slide-out room
extends and retracts. Id. at col. 4, ll. 54-57. “The shoe 80 and groove 78
maintain engagement of the roller 64 with the rack 34 and further comprise
part of the engagement means which maintains engagement of the rack with
the pinion by maintaining the fixed predetermined distance 81
therebetween.” Id. at col. 4, ll. 57-61 (emphasis added).
Thus, the disclosed corresponding structure for performing the
claimed function, which is “restraining movement of said drive members
away from said engagement members,” under § 112, ¶ 6 is roller 64, bearing
surfaces 72, 74 of gear racks 32, 34 shaped complementary to the cross
section of roller 64, shoe 80 covering hooked extension 76, and groove 78,
and equivalents thereof.
B. Asserted Grounds of Unpatentability
1. Anticipation Based on Kunz ’123
a. Claim 1
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
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Cir. 1987). “The identical invention must be shown in as complete detail as
is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Petitioner asserts that “the track 48 and slide block 42 arrangement of
Kunz . . . meet[] the engagement means limitation of claim 1.” Pet. 23; see
also Pet. 29 (“Thus, the slide block 42 and track 48 of Kunz correspond to
the claimed engagement means.” (citing Ex. 1007 ¶¶ 16-20)). As we have
construed independent claim 1, the “engagement means” requires the
following structure (or an equivalent): a roller; gear racks having bearing
surfaces shaped complementary to the cross section of the roller on which
the rollers roll; and a covered, hooked extension, separate and distinct from
the roller, that rides in a groove as the slide-out room extends and retracts.
Petitioner has not pointed to any disclosure by Kunz ’123 of such structure
(or its equivalent).
As asserted by Petitioner, and as shown in Figure 10 of Kunz,
reproduced below, the bearing surfaces in Kunz ’123 are between block 42
and track 48, not between block 42 and gear rack 52, as required by claim 1.
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Figure 10 from U.S. Patent 7,229,123.
In Kunz ’123, track 48 is fastened to slide plate 50 that is secured to
the floor of the slide-out room. Ex. 1002, col. 3, ll. 44-50. Gear rack 52 is
secured to the slide plate parallel and laterally outward of track 48 of each
slide unit. Id. Thus, the Kunz ’123 structure is different from the claimed
structure. Petitioner also has not identified any structure in Kunz ’123 that
corresponds to a covered, hooked extension in claim 1 that rides in a groove
as the slide-out room extends and retracts.
4
Accordingly, the asserted
structure in Kunz ’123 —track 48 and slide block 42—does not meet all the
structural limitations of claim 1. It is not enough merely to show

4
In the context of discussing claim 18, Petitioner asserts slide block 42 of
Kunz ’123 has dovetail portions 46 that are bent or hooked relative to the
rest of slide block 42 and base member 34 from which they extend, and
angled inward portions of track 48 correspond to the claimed groove. Pet.
29-30. Petitioner also asserts, without citation of evidentiary support, that
“[i]n common usage, something that is ‘hooked’ is curved or bent for
catching, holding or pulling something.” Id. Dovetail portions 46, however,
do not correspond to the disclosed covered, hooked extension, separate from
the roller.
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performance of the recited function. Pennwalt Corp. v. Durand-Wayland,
Inc., 833 F.2d 931, 934 (Fed. Cir. 1987) (“[S]ection 112, paragraph 6, rules
out the possibility that any and every means which performs the function
specified in the claim literally satisfies that limitation.”).
Petitioner also asserts “the slide block 42 and track 48 of Kunz [’123]
are equivalent to the structures disclosed in the ’455 patent specification for
performing the function of ‘restraining movement of said drive members
away from said engagement members[.]’” Pet. 23 n.3. The proper test for
determining equivalent structure under § 112, ¶ 6 is whether the differences
between the structure in the asserted reference and the structure in the
properly construed claim are insubstantial. See Valmont Indus., Inc. v.
Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993) (“In the context of
section 112, however, an equivalent results from an insubstantial change
which adds nothing of significance to the structure, material, or acts
disclosed in the patent specification.”). In our view, the differences between
the structure asserted by Petitioner, slide block 42 and track 48 of Kunz
’123, and claim 1 are more than “insubstantial.” As discussed above, for
example, the bearing surfaces in Kunz ’123 are between block 42 and track
48, not between block 42 and gear rack 52, as required by claim 1. Kunz
’123 employs a slide, but the claims require a roller. Also, Petitioner does
not point to persuasive evidence that the slide block 42 and track 48 are
equivalent to features of claim 1. The cumulative effect of these differences
results in a substantially different structure.
Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claim 1 is unpatentable under 35 U.S.C. § 102 based on Kunz ’123.
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b. Claim 18
Claim 18 depends from claim 1 and, thus, includes all its limitations.
Claim 18 recites that the hooked extension, which is part of the engagement
means, extends from each bearing block into a groove in each engagement
member, i.e., in each gear rack 32, 34. The fact that claim 18 recites
structure already included in claim 1 based on the claim construction of the
term “engagement means,” does not change our analysis of claim 1.
5

Because Kunz ’123 does not anticipate claim 1, it also does not anticipate
claim 18. Accordingly, on the record before us, we determine that Petitioner
has not demonstrated a reasonable likelihood of prevailing in showing that
claim 18 is unpatentable under 35 U.S.C. § 102 based on Kunz ’123.
2. Obviousness Based on Kunz ’123
a. Claims 18 and 19
Claim 18 depends from claim 1 and is summarized above. Claim 19
depends from claim 18 and recites that the hooked extension is covered by a
low friction, plastic shoe.

5
See Laitram Corp. v. Rexnord Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)
(“The interpretation of [a] ‘means for . . .’ [clause] comes from the
specification via section 112(6), not from [a dependent claim]. Thus, the
prohibition against reading limitations from a dependent claim into the
independent claim is not violated. . . . Simply stated, the judicially developed
guide to claim interpretation known as ‘claim differentiation’ cannot
override the statute. A means-plus-function limitation is not made
open-ended by the presence of another claim specifically claiming the
disclosed structure which underlies the means clause or an equivalent of that
structure. If Laitram’s argument were adopted, it would provide a
convenient way of avoiding the express mandate of section 112(6). We hold
that one cannot escape that mandate by merely adding a claim or claims
specifically reciting such structure or structures.”).
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With respect to claim 18, Petitioner asserts that “[r]eversing the
arrangement of the hook and the groove would have been obvious to one of
ordinary skill in the art.” Pet. 41. The “hook and groove” to which
Petitioner refers are dovetail portions 46 of slide block 42 and angled inward
portions of track 48. See Pet. 30-31. As discussed above, Petitioner has not
shown that Kunz ’123 discloses or suggests the “engagement means”
required by claim 1. Reversing the asserted hook and groove does not
remedy this deficiency.
Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claims 18 and 19 are unpatentable under 35 U.S.C. § 103 based on
Kunz ’123.
3. Anticipation Based on Huffman
a. Claim 1
Huffman discloses an operating mechanism for selectively extending
and retracting a slide-out section of a vehicle. Ex. 1003, col. 2, ll. 8-10. As
shown in Figure 4 from Huffman, reproduced below, the operating
mechanism includes support member 26 fixed to vehicle body 10. Id. at col.
3, ll. 27-35.
[Continued on following page.]

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Figure 4 from U.S. Patent 6,948,754.
Two pairs of rollers 28 are mounted to support member 26 and
support rail member 30. Id. Toothed rack 32 is fixed to rail member 30. Id.
Rotatably driven pinion 34 engages rack 32 to drive rail member 30, and
thus the slide-out section. Id. at col. 3, ll. 35-37.
Petitioner asserts Huffman discloses an actuating mechanism that is
“designed to restrain movement of the pinions away from their
corresponding racks.” Pet. 22. According to Petitioner, because rollers 28
are fixed relative to pinion 34, engagement of the rollers in the C-channels
of the rail members restrains movement of the pinions away from the racks.
Pet. 23-24. Based on this analysis, Petitioner concludes that “rollers 28 and
rail members 30 of Huffman meet the engagement means limitation of claim
1.” Id. at 24; see also id. at 34 (“The rollers 28 and rail members 30
correspond to the claimed engagement means.”).
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Our analysis and conclusion are the same as stated above with respect
to the asserted anticipation based on Kunz ’123. As we have construed
independent claim 1, the “engagement means” in claim 1 requires the
following structure (or an equivalent): a roller; gear racks having bearing
surfaces shaped complementary to the cross section of the roller on which
the rollers roll; and a covered, hooked extension, separate and distinct from
the roller, that rides in a groove as the slide-out room extends and retracts.
Petitioner has not pointed to any disclosure by Huffman of this structure (or
an equivalent). As asserted by Petitioner, the bearing surfaces in Huffman
are between rollers 28 and the C-channels of rail members 30, not between
rollers 28 and bearing surfaces on gear rack 32, as required by claim 1.
Petitioner also has not identified any disclosure by Huffman of a separate
and distinct covered, hooked extension that rides in a groove as the slide-out
room extends and retracts, as also required by claim 1. Thus, the Huffman
structure is different from the claimed structure. Accordingly, the asserted
structure in Huffman, rollers 28 and rail members 30, does not meet all the
structural limitations of claim 1. Pennwalt, 833 F.2d at 934 (“[S]ection 112,
paragraph 6, rules out the possibility that any and every means which
performs the function specified in the claim literally satisfies that
limitation.”).
Again, as with Kunz ’123, Petitioner asserts that its analysis and
conclusion are the same whether or not the “engagement means” limitation
is considered a means-plus-function limitation, because rollers 28 and C-
channel rail members 30 of Huffman “are equivalent to the structures
disclosed in the ’455 patent specification for performing the function of
‘restraining movement of said drive members away from said engagement
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members[.]’” Pet. 24 n.4. In our view, the differences between the structure
asserted by Petitioner, rollers 28 and rail members 30 of Huffman, and the
structure disclosed in the Specification that corresponds to the “engagement
means” of claim 1, are more than insubstantial. See Valmont
Indus., 983 F.2d at 1043 (“In the context of section 112, however, an
equivalent results from an insubstantial change which adds nothing of
significance to the structure, material, or acts disclosed in the patent
specification.”). For example, the bearing surfaces in Huffman are between
rollers 28 and the C-channels of rail members 30, not between rollers 28 and
bearing surfaces on gear rack 32, as required by claim 1. Petitioner also has
not identified any disclosure by Huffman of a separate and distinct covered,
hooked extension that rides in a groove as the slide-out room extends and
retracts, as required by claim 1. The cumulative effect of these differences
results in a substantially different structure.
Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claim 1 is unpatentable under 35 U.S.C. § 102 based on Huffman.
b. Dependent Claims 2-4, 6-12, and 15
Claims 2-4, 6-12, and 15 depend directly or indirectly from claim 1
and, thus, include all its limitations. Because we have determined that
Huffman does not anticipate claim 1, it follows that Huffman also does not
anticipate claims 2-4, 6-12, and 15. Richardson v. Suzuki, 868 F.2d at 1236
(“Every element of the claimed invention must be literally present, arranged
as in the claim.”).
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Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood that claims 2-4, 6-12, and 15 are
unpatentable under 35 U.S.C. § 102 based on Huffman.
4. Obviousness Based on Huffman
a. Claims 5 and 16
Claims 5 and 16 depend indirectly from claim 1 and, thus, include all
its limitations. Claims 5 and 16 require “means for ensuring
[6]
said
engagement members are substantially parallel.” The clauses in claims 5
and 16 are in means-plus-function format and are construed in accordance
with 35 U.S.C. § 112, ¶ 6. The corresponding structure described in the
Specification for performing the claimed function is assembly straps 38, 40,
illustrated in Figures 1 and 4, which are temporary straps to assure that the
alignment of racks 32, 34 remain parallel to each other. Ex. 1001, col. 3, ll.
55-58. Thus, these straps are the structure called for in the claims.
Petitioner asserts that structures incorporating elements arranged to
ensure parallelism, features (such as shoulders) on parts for ensuring
parallelism, and utilization of jigs or fixtures to ensure parallelism had been
known before the effective filing date of the ’455 patent, and that the use of
such structures or features would have been well known to those of skill in
the art. Pet. 43. This assertion fails to establish that the structure called for
in the claims, temporary straps, would have been obvious. Petitioner’s
assertions about what would have been obvious concerning claims 5 and 16
also do not cure the deficiencies in Huffman concerning failure to disclose
the elements required in independent claim 1.

6
Claim 16 is identical to claim 5 except it recites “means for assuring.” In
this context, we view this as a distinction without a difference.
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Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claims 5 and 16 are unpatentable under 35 U.S.C. § 103 based on Huffman.
5. Obviousness Based on Kunz ’123 and Huffman
a. Claims 2-12, 15, and 16
For claims 2-6, 8-12, 15, and 16, Petitioner asserts that one skilled in
the art would understand that the roller and rail system of Huffman also
could be used in place of slide block 42 and track 48 of Kunz ’123, because
both arrangements restrain movement of the pinion away from the rack.
E.g., Pet. 44. For claim 7, Petitioner asserts one skilled in the art would
understand that single shaft 36 arrangement of Huffman could be used in the
Kunz ’123 actuating system, because the single shaft of Huffman performs
the same function as the two-piece shaft 22, 24 arrangement of Kunz. Pet.
48-49. Neither assertion overcomes the basic deficiencies of these
references in failing to disclose or suggest the structure required by claim 1.
Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claims 2-12, 15, and 16 are unpatentable under 35 U.S.C. § 103 based on
Kunz ’123 and Huffman.
6. Additional Grounds
Petitioner asserts additional grounds against dependent claims 13, 14,
and 17 in which additional references are combined with Kunz ’123 and/or
Huffman. These additional references, however, fail to overcome the basic
deficiencies of Kunz ’123 and/or Huffman, as discussed above, in failing to
disclose or suggest the structure required by claim 1.
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Accordingly, on the record before us, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing in showing that
claims 13, 14, and 17 are unpatentable under 35 U.S.C. § 103.
III. CONCLUSION
For the foregoing reasons, based on the information presented in the
Corrected Petition, we determine that Petitioner has not demonstrated a
reasonable likelihood that it would prevail in establishing that any of claims
1-19 of the ’455 patent is unpatentable. Accordingly, we deny the Petition
and do not institute an inter partes review of the ’455 patent.

IV. ORDER
For the reasons given, it is
ORDERED that the Petition challenging the patentability of the
claims of U.S. Patent No. 8,235,455 B2 is denied.

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Patent 8,235,455 B2

26

For PETITIONER:

Wesley Mueller
wmueller@leydig.com

Gregory Bays
gbays@leydig.com

For PATENT OWNER:

Mark A. Hagedorn
mhagedorn@btlaw.com

Mark P. Vrla
mvrla@btlaw.com