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

Patent Trial and Appeal Board

Jun 3, 2015

13728137 (P.T.A.B. Jun. 3, 2015)

Trials@uspto.gov Paper 28
Tel: 571-272-7822 Entered: June 3, 2015

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 IPR2014-00313
Patent 8,573,666 B2
_______________

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

GROSSMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
AL-KO Kober, LLC (“Petitioner”) filed a Corrected Petition
requesting an inter partes review of claims 1–9 of U.S. Patent No.
8,573,666 B2 (“the ’666 patent”). Paper 8 (“Pet.”). We instituted an inter
partes review of claims 1–5, 8, and 9 of the ’666 patent under 35 U.S.C. §
103(a) for obviousness based on Kunz (Ex. 1001)
1
and Nebel (Ex. 1005)
2

and claims 6 and 7 under 35 U.S.C. § 103(a) for obviousness based on Kunz,
Nebel, and Huffman (Ex. 1003)
3
. Decision on Institution of Inter Partes
Review, Paper 9 (“Decision”). Lippert Components Manufacturing, Inc.
(“Patent Owner”) filed a Patent Owner Response. Paper 15 (“PO Resp.”).
Petitioner filed a Reply. Paper 21 (“Reply”).
An oral hearing was held on March 4, 2015. A transcript of the
hearing is included in the record. Paper 26 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine Petitioner has shown, by a
preponderance of the evidence, that claims 1–9 are unpatentable.
A. Related Proceedings
The ’666 patent is involved in a pending district court proceeding,
Lippert Components Manufacturing, Inc. v. AL-KO Kober LLC, No. 3:13-
cv-697 (N.D. Ind.), filed July 11, 2013. Pet. 1; Paper 5.

1
U.S. Patent No. 7,229,123 B2.
2
U.S. Published Application US 2005/0230989 A1. Kunz and Nebel were
cited in the prosecution of the ’666 patent. The Examiner, however, did not
apply either Kunz or Nebel against the claims. Tr. 22, ll. 16–18.
3
U.S. Patent No. 6,948,754 B2

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B. The ’666 Patent
The invention claimed in the ’666 patent relates, generally, to a slide-
out or retractable room for mobile living quarters, such as a recreation
vehicle. Ex. 1001, col. 1, ll. 19–20.
The general structure of the retractable room is shown in Figures 4
and 5 of the ’666 patent, reproduced below.

Figures 4 and 5 from the ’666 patent.
Figures 4 and 5 show mobile living quarters, such as a recreational
vehicle, indicated generally at 10, includes side wall 12. Side wall 12
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defines aperture 14 through which slide-out room 16 extends and retracts.
Ex. 1001, col. 3, ll. 26–31. 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. 31–33. Actuation assemblies 28, 30 are mounted on side walls
20, 22, respectively. Id. at col. 3, ll. 34–35. Each actuation assembly
includes upper rack or engagement member 32, lower rack or engagement
member 34, and cover 36 defining a column that covers the mechanism that
drives rack 32, 34. Id. at col. 3, ll. 37–41.
Figures 2 and 3 of the ’666 patent are reproduced below.

Figures 2 and 3 from the ’666 patent show a drive member.
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As shown in Figures 2 and 3, a drive member in the form of splined
torque shaft 52 is defined by circumferentially spaced splines 56. Ex. 1001,
col. 4, ll. 12–20. 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. 20–23. Roller 64 has bearing faces 66, 68. Id. at col. 4, ll.
29–30. 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. 36–39. A retention member, in the form of hooked
extension 76, extends into a longitudinally extending groove of rack 34. Id.
at col. 4, ll. 39–41.
C. Illustrative Claim
Claim 1, the sole independent claim, is illustrative of the claimed
invention:
1. An actuating assembly operable to extend and retract a
retractable room between extended and retracted positions
relative to an aperture, said actuating assembly comprising:
an engagement member mounted on a sidewall of said
retractable room and movable with said retractable room
between the extended and retracted positions;
a drive member, said drive member having engagement
features engaging said engagement member to move said
retractable room between the retracted and extended positions;
and
a retention member, said retention member connecting to
said engagement member and maintaining engagement between
said drive member and said engagement member regardless of
changes in spacing between said retractable room and said
aperture.
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs. LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015)
(“Congress implicitly adopted the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation.”). Claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Petitioner does not propose a specific construction for the claims.
Patent Owner proposes that the claims be given their plain and
ordinary meaning. Yet, for “clarification” and “avoidance of doubt,” Patent
Owner asserts that the phrase “engagement member mounted on a sidewall”
“requires that the component providing for engagement must, after
mounting, be disposed on a sidewall of the slide out room rather than below
the floor of the slide out room.” PO Resp. 13–14. Patent Owner cites no
evidence to support this claim interpretation. We determine that, under the
broadest reasonable interpretation, and giving the words their plain and
ordinary meaning consistent with the Specification, the phrase “engagement
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member mounted on a sidewall” means that the engagement member is fixed
securely to a sidewall.
4

B. Asserted Grounds of Unpatentability
1. Obviousness Based on Kunz and Nebel
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a).
5
In Graham v. John Deere Co.
of Kansas City, 383 U.S. 1 (1966), the Court set out a framework for
applying the statutory language of § 103:
Under § 103, the scope and content of the prior art are to
be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the
subject matter is determined.
Id. at 17–18. “While the sequence of these questions might be reordered in
any particular case, the factors continue to define the inquiry that controls.”
KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 407 (2007).

4
“Mounted” is defined as “[t]o fix securely to a support.” American
Heritage® Dictionary of the English Language, Fifth Edition (2011).
Retrieved May 25, 2015, from http://www.thefreedictionary.com/mounted.
See also Chef America, Inc. v. Lamb-Weston, Inc., 358 F. 3d 1371, 1373
(Fed. Cir. 2004) (“These are ordinary, simple English words whose meaning
is clear and unquestionable. There is no indication that their use in this
particular conjunction changes their meaning. They mean exactly what they
say.”).
5
The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
application for the patent at issue in this proceeding has an effective filing
date before that date, we refer to the pre-AIA versions of § 103.
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The Supreme Court made clear that we apply “an expansive and
flexible approach” to the question of obviousness. Id. at 415. Whether a
patent claiming the combination of prior art elements would have been
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To reach this conclusion, however, it is not enough to show
merely that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the
additional showing that a person of ordinary skill at the time of the invention
would have selected and combined those prior art elements in the normal
course of research and development to yield the claimed invention. Id. “A
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985).
Petitioner has the burden of proof to establish unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e).
Against this general background, we consider the references, other
evidence, and arguments on which Petitioner relies.
a. Claim 1
Claim 1 requires an “engagement member” mounted on a sidewall of
a retractable room and moveable with the retractable room. The
Specification describes each of racks 32, 34 as an “engagement member.”
Ex. 1001, col. 3, ll. 38–41.
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Petitioner asserts that “slide plate 50 and gear rack 52 of the Kunz
slide-out actuating system corresponds to the recited engagement member.”
Pet. 28; see also Pet. 34 (“engagement member (slide plate 50 and gear rack
52)).”
6
Slide plate 50 is bolted to the bottom or floor of the slide-out room
in Kunz. Ex. 1002, col. 3, ll. 46-48. It is not mounted on a sidewall as
required by claim 1. Gear rack 52 is welded or otherwise fastened to the
bottom of the slide plate. Id. at col. 3, ll. 48–50. We find that Kunz
discloses an “engagement member” mounted on the floor, not a side wall, of
a retractable room.
The primary issue between the parties is whether it would have been
obvious, based on the disclosure in Nebel, to reposition the “engagement
member” of Kunz from the floor to a sidewall. Before addressing this issue,
however, we discuss briefly the other elements of claim 1.
Claim 1 also requires a “drive member” engaging the “engagement
member” to move the retractable room between the extended and retracted
positions. The Specification describes the “drive member” as torque shaft
52 with splines 56 received in grooves of pinions 58, 60. Ex. 1001, col. 4,
ll. 12–23.
Petitioner asserts that pinion 60 in Kunz corresponds to the required
“drive member.” Pet. 21. Pinion 60 engages gear rack 52 to move the slide-
out room between the extended and retracted positions. Ex. 1002, Fig 10;

6
Petitioner also refers, in some places in the Petition, to only “rack 52” as
the “engagement member.” E.g., Pet. 21, 34. Based on the totality of
Petitioner’s assertions, however, we understand Petitioner’s position to be
that slide plate 50 and gear rack 52 of Kunz each are components of the
recited engagement member.
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see id. at col. 3, ll. 44–50, col. 4, ll. 1–6. We find that Kunz discloses a
“drive member,” as claimed.
Claim 1 further requires a “retention member” connecting to the
engagement member to maintain engagement between the “drive member”
and the “engagement member.” The Specification describes the “retention
member” as hooked extension 76 extending into longitudinally extending
groove 78 of rack 34. Ex. 1001, col. 4, ll. 39–41. As described in the
Specification, the “retention member” maintains engagement between the
gear rack and the pinion. Id. at col. 4, ll. 41–46.
Petitioner asserts “slide block 42 of Kunz . . . meets the retention
member limitation of claim 1.” Pet. 21; see also Pet. 34 (“The slide block
42 of Kunz corresponds to the claimed retention member.”). Slide block 42
of Kunz is bolted to upper flange 40 of base 34. Ex. 1002, col. 3, ll. 26–29.
Slide block 42 has dovetail portions 46 that are received in close sliding
contact with track 48. Id. at col. 3, ll. 29–30. This provides a form fit
between block 42 and track 48 so that track 48 is captured relative to slide
block 42 laterally, vertically, and in all directions perpendicular to the
direction of extension and retraction. Id. at col. 3, ll. 35–38. Track 48 is
bolted, or otherwise fastened, to slide plate 50. Id., col. 3, ll. 44–45. The
relationship among slide block 42, track 48, base 34 and slide plate 50 is
shown in Figure 10 of Kunz, reproduced below.
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Figure 10 from Kunz, U.S. Patent 7,229,123 (Ex. 1002).
As shown in Figure 10 of Kunz, the connection between slide block
42 and track 48 serves to restrain movement of base member 34 relative to
slide plate 50. Track 48 establishes a connection between the asserted
“retention member” (slide block 42) and the asserted “engagement member”
(slide plate 50 and gear rack 52) to maintain engagement between the “drive
member” (pinion 60) and the “engagement member” (slide plate 50 and gear
rack 52). We find that Kunz discloses a “retention member” as required by
claim 1.
We now turn to an analysis of Nebel.
Nebel discloses a slide-out mechanism for controllably moving a
slide-out section of a recreational vehicle. Ex. 1005 ¶¶ 1, 2. As shown in
annotated Figure 4, below, the mechanism includes upper track 210 and
lower track 220 both mounted to side wall 120 of the slide-out section. Id.
¶ 29. Tracks 210 and 220 correspond to engagement members 32 and 34 in
the ’666 patent. Independent claim 1, and the claims dependent therefrom,
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require only a single engagement member (“an engagement member”), and
thus, the claims do not require both engagement member 32 and engagement
member 34.

Figure 4 of Nebel (Ex. 1005), annotated.
Patent Owner concedes that upper track 210 of Nebel is mounted to
the side wall 120. PO Resp. 13 (“In actuality, only the upper track 210 is
mounted to the side wall 120.”). According to Patent Owner, however, the
lower track 220 is mounted to the “underside of a floor of the slide-out
section.” Id. (citing Ex. 1005 ¶ 29) (emphasis added). We disagree, as we
explain below. Whether one or both tracks in Nebel are mounted to the side
wall, however, is not significant because the claims require only a single
engagement member or track mounted to a side wall. Thus, even if Nebel is
limited to one engagement member on the side wall and one engagement
under the floor, it still supports Petitioner’s position.
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As shown in annotated Figure 2 from Nebel, below, upper track 210 is
fixed to sidewall 120.

Figure 2 from Nebel (Ex. 1005), annotated.
As stated in Nebel, upper track 210 is mounted along each of the top
portions of side walls 120 of slide-out section 100. Ex. 1005 ¶ 29. Nebel
illustrates the position of lower track 220 in Figure 3, reproduced below and
annotated to identify lower track 220.
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Figure 3 from Nebel (Ex. 1005), annotated.
Nebel states that in addition to lower track 220 being mounted to an
underside of a floor of the slide-out section 100, lower track 220 also is
mounted along each of the lower portions of the side walls 120 of the slide-
out section 100 where the side walls intersect the floor. Ex. 1005 ¶ 29
(emphases added). Nebel also states that lower track 220 is formed roughly
in an L-shape and also can be thought of as a bracket member. Id. ¶ 33. L-
shaped lower track 220 includes vertical wall or surface 221 with mounting
holes 222 for fastening lower track 220 to the bottom portions of side walls
120 of the slide-out section 100. Id. (emphasis added). Lower track 220 is
fixed securely to side wall 120 by means of mounting holes 222, and, thus,
“mounted on a side wall” within the meaning of the claim.
Petitioner asserts “it would have been obvious to a person of ordinary
skill in the art . . . to move one or both of the Kunz slide units 18, 20
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including slide plate 50 and gear rack 52 (engagement member) to a side
wall of the slide-out room.” Pet. 21–22 (emphasis added). The rationale
provided for the proposed modification is that it is a “simple rotation” of the
Kunz actuating assembly that yields predictable results (Pet. 22 (citing
Ex. 1006 ¶ 24)) and provides improved stability, as suggested by Nebel (id.
at 23–24).
Petitioner’s Declarant, Dr. Frank Fronczak (Ex. 1006), states this
same opinion: it “would have been obvious to move one or both of the
Kunz slide units 18, 20 including the slide plate 50 and gear rack 52
(engagement member) to a sidewall of the slide-out room.” Ex. 1006 ¶ 24
(emphasis added). In Dr. Fronczak’s opinion, the proposed modification
involves “little more than rotating the Kunz actuating assembly by 90
degrees.” Id. Dr. Fronczak concludes that such modification involves
“nothing more than the application of well-known techniques within the
common sense of a person skilled in the art and would yield a predictable
result.” Id.
Petitioner also asserts that Kunz teaches a system that pushes the
slide-out section only at the bottom, precisely the type of system that,
according to Nebel, is improved by arranging a gear assembly on the side
wall near the top of the slide-out section. Reply 4–5. According to
Petitioner, “Nebel’s statements about improved support and stability are not
made in the abstract, rather they are made in comparison to systems that
push only at the bottom like Kunz.” Id. at 5 (emphasis added).
Nebel states that mounting the tracks on the side wall provides greater
support and stability over systems where the tracks, or gear racks, are
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mounted at the bottom, or floor, of the slide-out section. Ex. 1005 ¶ 5.
Nebel also states that this arrangement prevents misalignment. Id.
b. Patent Owner’s Position
Patent Owner argues that Petitioner’s “entire obviousness challenge
rests on the hindsight argument that it would have been obvious to move the
Kunz slide units to the side wall of the slide out room.” PO Resp. 2, see also
id. at 27 (Petitioner “argues, with the aid of the ‘666 Patent, that it would
have been obvious to modify Kunz in view of Nebel.”). It is Patent Owner’s
position that Petitioner fails to provide a “plausible reason why a person of
ordinary skill viewing the teaching of Kunz would ever move the Kunz slide
units to a side wall.” Id. In particular, Patent Owner argues that, because
Kunz has addressed stability, a skilled person would not have used Nebel’s
stability features in Kunz. As discussed above, however, Nebel discloses
that using a track on the side wall provides improved stability and
performance over a system that uses only tracks under the floor. Ex. 1005
¶ 5. Therefore, we conclude that, even if the Kunz system provides
improved stability, a person of ordinary skill in the art would have had
reason to apply the disclosure of Nebel to improve stability further.
According to Patent Owner, Petitioner has not addressed significant
challenges of the proposed combination resulting from “pigeon toeing,”
“thick walls,” and synchronization. PO Resp. 3. Patent Owner argues that
the references “teach away” from the proposed modification because these
challenges would discourage a person of ordinary skill from making
them. Id.
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
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path set out in the reference, or would be led in a direction divergent from
the path that was taken by the claims. In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). The alleged complexities — pigeon toeing (PO Resp. 32),
substantial modification of the side wall (id. at 38)
7
, and synchronization (id.
at 42) — are not discussed in the ’666 patent as significant issues. Pigeon
toeing is not mentioned in the ’666 patent. Moreover, Dr. Massoud S.
Tavakoli, Patent Owner’s Declarant, acknowledged that “pigeon toeing is
common in almost any slide out room.” Ex. 2001 ¶ 64 (citing Ex. 2003,
196)). Thus, it is the kind of common engineering challenge that a person of
ordinary skill and creativity confronts regularly in the technology of slide
out rooms.
Patent Owner’s alleged complexities are based on physically
combining the references. The obviousness inquiry does not ask “whether
the references could be physically combined but whether the claimed
inventions are rendered obvious by the teachings of the prior art as a whole.”
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). Accordingly, Patent Owner’s teaching away
arguments are not persuasive.

7
When asked if the alleged sidewall complexity resulting from the proposed
modification was excluded from the scope of the claims, counsel for Patent
Owner stated “[t]here is no exclusion in the claim from that.” Tr. 38, ll. 2–7.
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c. Level of Ordinary Skill
Petitioner relies on the Declaration of Dr. Fronczak (Ex. 1006) to
establish the level of ordinary skill in the relevant technology. Dr. Fronczak
states that he “has been informed that the level of skill in the art is evidenced
by the prior art references.” Ex. 1006 ¶ 14. Dr. Fronczak opines that the
prior art “demonstrates” that a person of ordinary skill in the art “would have
had a B.S. degree in Mechanical Engineering or a closely related field and at
least three years of experience in mechanical design, or equivalent.” Id.
Patent Owner asserts a slightly different level of ordinary skill. It is
Patent Owner’s position that a person of ordinary skill has at least two years
of technical training in mechanical engineering or design, and at least two
years of experience in mechanical engineering or design, or equivalent. PO
Resp. 14 (citing Ex. 2001 ¶ 21).
Essentially, the difference in the parties’ positions is whether a
bachelor of science degree is required. We determine that the asserted prior
art reflects the level of skill, and patentability does not depend on whether
Petitioner’s or Patent Owner’s asserted definition is used. Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the
level of skill in the art is not error where the prior art itself reflects an
appropriate level and a need for testimony is not shown). Moreover, the
differences in the parties’ positions are insignificant in resolving the issue of
the patentability of the challenged claims.
Based on the analysis above, we conclude that the preponderance of
the evidence establishes that invention claimed in claim 1 would have been
obvious based on Kunz and Nebel. A person of ordinary skill in the art
would have had reason to modify Kunz using the teachings of Nebel, and
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such a modification would have been within the level of ordinary skill in the
art.
d. Claims 2–5, 8, and 9
Claims 2–5, 8, and 9 depend, directly or indirectly, from claim 1, the
sole independent claim.
Claim 2 requires the retention member (hooked extension 76 shown in
Figures 2 and 7) to project from a bearing block and maintain engagement of
the drive member with the engagement member. Petitioner asserts that base
member 34 of Kunz corresponds to the claimed “bearing block” because it
accommodates the bearings and supports shaft 22, 24. Pet. 35. Petitioner
also asserts that engagement of slide block 42 in track 48 in the Kunz system
links pinion 60 (drive member) to rack 52 (engagement member) so as to
restrain movement of pinion 60 (drive member) away from rack 52
(engagement member). Id.
Claim 3 requires the engagement member to include a plurality of
slots and the drive member to include engagement features to mesh with the
plurality of slots. Petitioner asserts that gear rack 52 in Kunz includes a
plurality of teeth that define a plurality of slots with each slot being arranged
between an adjacent pair of teeth. Pet. 35. Petitioner also asserts that teeth
of pinion 60 in Kunz (drive member) mesh with the teeth, and the slots
between the teeth, of the corresponding rack 52 (engagement member). Id.
at 36.
Claim 4 requires the retention member to extend over the engagement
member. Petitioner asserts that slide block 42 (retention member) of Kunz
includes dovetail portions 46, which extend over part of track 48, gear rack
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52, and part of slide plate 50, all of which are part of the engagement
member of Kunz. Pet. 36.
Claim 5 requires the retention member to include low friction plastic.
Petitioner asserts that Kunz discloses that slide block 42 should be made of a
highly lubricous material such as ultra-high molecular weight polyethylene.
Pet. 36.
Claim 8 requires the drive member to include a pinion rotatable by a
motor. Petitioner asserts that pinions 60 (drive members) of Kunz are
rotatable by drive shafts 22, 24, which are connected through a gear box to a
motor drive unit 26. Pet. 37.
Claim 9 requires the engagement member to include a rack having a
plurality of slots for meshing with the pinion. Petitioner asserts that gear
rack 52 of Kunz includes a plurality of teeth that define a plurality of slots
with each slot between an adjacent pair of teeth. Pet. 37. Petitioner also
asserts that each pinion 60 of Kunz includes gear teeth that mesh with the
teeth, and the slots between the teeth, of the corresponding gear rack 52. Id.
Patent Owner states that “[b]ecause claims 2–9 depend from claim 1
and add further limitations, they are not obvious either.” PO Resp. 4. Patent
Owner does not address further the merits of claims 2–5, 8, and 9 in its
Response.
Based on the analysis above, the preponderance of the evidence
establishes that claims 2–5, 8, and 9 would have been obvious based on
Kunz and Nebel.
2. Claims 6 and 7 as Obvious Based on Kunz, Nebel, and Huffman
Claim 6, dependent from claim 1, requires that the claimed invention
further include at least one roller to support “said compartment.” There is
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no antecedent recitation of “compartment” in claim 1. The term “said
compartment” appears to refer to the “retractable room” in claim 1, and we
proceed on that basis. Claim 7, dependent from claim 6, further requires the
roller to engage the engagement member.
As discussed above, the basic elements recited in claim 1 are an
engagement member (racks 32, 34), a drive member (torque shaft 52), and a
retention member (hooked extension 76). Claim 6 adds an additional
element by “further including” at least one roller. The stated function of the
roller is to support the retractable room.
As described in the Specification, rollers engage corresponding
bearing surfaces defined on the racks to support the slide-out room as it
extends and retracts and to assure that the pinions remain meshed with the
racks. Ex. 1001, col. 2, ll. 45–48.
As shown in Figures 2 and 3 of the ’666 patent, roller 64, has a
substantially V-shaped cross section to define bearing faces 66, 68. Id. at
col. 4, ll. 29–30. The roller is shaped to maintain the relative positions of
rack 34 to roller 64 and to permit the slide-out room to move relative to the
unit. Id. at col. 4, ll. 33–35. Roller 64 and rack 34, along with other
elements, maintain engagement of rack 34 with pinion 58. Id. at col. 4,
ll. 45–46.
As shown in Figures 3–5 of Huffman, Huffman discloses an operating
mechanism for selectively extending and retracting a slide-out section of a
vehicle. Ex. 1003, col. 2, ll. 8–10. The operating mechanism includes
support member 26 fixed to vehicle body 10. Id. at col. 3, ll. 27–36. 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
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driven pinion 34 engages rack 32 to drive rail member 30 and, thus, the
slide-out section. Id. Rail member 30 is driven by pinion 34 that engages
rack 32 fixed to the rail member 30. Id. at col. 4, ll. 59–60. Driven pinion
34 has radially outwardly extending teeth 76 that engage rack teeth 72 to
drive rail member 30 between the extended position and the retracted
position. Id. at col. 5, ll. 6–9.
Petitioner asserts that one skilled in the art would understand that the
roller and rail system of Huffman could be used in the place of, or in
combination with, slide block 42 and track 48 of Kunz because both
arrangements restrain movement of the pinion away from the rack. Pet. 38.
The rationale provided for the proposed modification is that “such a
combination would simply re-arrange old elements, i.e. the roller and rail
system of Huffman for the slide block 42 and track 48 of Kunz, with each
performing the same function it had been known to perform.” Id. (citing
Ex. 1006 ¶¶ 41, 43). Dr. Fronczak restates Petitioner’s position. Ex. 1006
¶ 41. He also opines that “one skilled in the art would understand that the
roller and rail system of Huffman could be used in the place of, or in
combination with, the slide block 42 and track 48 of Kunz because both
arrangements restrain movement of the pinion away from the rack.” Id.
¶ 43. Because claim 6 adds an additional element by “further including” at
least one roller, we focus on Huffman in combination with Kunz.
Petitioner asserted that the reason a person of ordinary skill would use
both the slide block (retention member) of Kunz and the roller of Huffman is
to obtain the “additional advantage of reduction of binding.” Tr. 17, ll. 8–
18. Dr. Fronczak testified at his deposition that:
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Q. Where does the roller go with respect to the Kunz in
that hypothetical?
A. The roller would go with the Kunz on the side wall.
Q. Does the roller replace the slide block?
A. No, it would -- there’s different – once again, as we
talked about earlier, there’s more than one way – more
than one way that this – that a design can develop. And so
the roller cannot just be a swapped out for the dovetailed
block. What a roller -- could be done, you could have the
two rollers that are crossed or you could put a roller
positioned underneath the rail or an extension from the rail
of the Kunz device. This is – I said it’s a rearrangement of
known devices.
Ex. 2004, 142, ll. 1–17.
8

Patent Owner argues that Petitioner “improperly adds Huffman to its
proposed combination without articulating any reason for doing so and
based entirely on hindsight.” PO Resp. 50. Patent Owner asserts that
Petitioner’s asserted motivation for the combination — to “restrain
movement of the pinion away from the rack” — would not be applicable.
Id. at 51(citing Ex. 2001 ¶ 101.) Dr. Tavakoli opines in his Declaration
(Ex. 2001) that a person of ordinary skill would have no reason to add the
Huffman rollers because the Kunz slide units would already restrain
movement of the pinion away from the rack for the same purpose.
Ex. 2001 ¶ 101.
In weighing the evidence, we conclude that combining the Huffman
rollers with the Kunz slide is merely adding a well-known element, a roller,
to improve performance (restraining movement of the pinion away from the
rack) (Pet. 38) and obtaining the known benefits of a roller to facilitate

8
Citations are to pages of the deposition transcript.
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slideable movement and support, as suggested by Huffman (Ex. 1003, col. 3,
ll. 28–32. We determine that this is well within the skill and creativity of a
person of ordinary skill. Accordingly, we are persuaded that claims 6 and 7
would have been obvious based on Kunz, Nebel, and Huffman.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated, by
a preponderance of the evidence, that claims 1–5, 8, and 9 are unpatentable
under 35 U.S.C. § 103(a) based on Kunz and Nebel, and that claims 6 and 7
are unpatentable under 35 U.S.C. § 103(a) for obviousness over Kunz,
Nebel, and Huffman.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that, based on Petitioner’s showing by a preponderance of
the evidence, claims 1–9 are unpatentable.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

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For PETITIONER:

Wesley O. Mueller
Greg C. Bays
Leydig, Voit & Mayer, Ltd.
wmueller@leydig.com
gbays@leydig.com

For PATENT OWNER:

Mark Hagedorn
Mark P. Vrla
Barnes & Thornburg LLP
mhagedorn@btlaw.com
mvrla@btlaw.com