Caterpillar Inc.v.MILLER INTERNATIONAL LTD.

Patent Trial and Appeal Board

Jun 14, 2016

12698700 (P.T.A.B. Jun. 14, 2016)

Trials@uspto.gov Paper 8
571-272-7822 Entered: June 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CATERPILLAR, INC.,
Petitioner,

v.

MILLER INTERNATIONAL, LTD.,
Patent Owner.
____________

Case IPR2015-00434
Patent 8,112,914 B2
____________

Before HYUN J. JUNG, SCOTT A. DANIELS, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

DANIELS, 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
A. Background
Caterpillar, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1–23 and 39–42 of U.S. Patent No. 8,112,914 B2
(“the ’914 patent”). Paper 2 (“Pet.”). Patent Owner filed a Preliminary
Response. Paper 5. We instituted trial for claims 1–23 and 39–42 of the
’914 patent on certain grounds of unpatentability alleged in the Petition.
Paper 6 (“Decision to Institute” or “Inst. Dec.”).
In the Scheduling Order, which sets times for taking action in this
proceeding, we notified the parties that “any arguments for patentability not
raised in the [Patent Owner] response will be deemed waived.” See Paper 7,
4. Additionally, the Board’s Trial Practice Guide states that the Patent
Owner Response “should identify all the involved claims that are believed to
be patentable and state the basis for that belief.” Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Patent Owner did not file a Patent Owner Response within the time
period set forth in the Scheduling Order. Patent Owner neither sought
authorization to file a Patent Owner Response after the deadline, nor
indicated that it wished to file such a Response or any further papers in this
proceeding. We have before us, therefore, unrebutted argument and
evidence as set forth in the Petition. Nonetheless, Petitioner bears the
burden to show, by a preponderance of the evidence, that the challenged
claims are unpatentable.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–23 and 39–42 of the ’914
patent are unpatentable.
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B. Additional Proceedings
The ’914 patent also is challenged in IPR2015-00435 with respect to
the patentability of claims 24–38. A final written decision in IPR2015-
00435 is entered concurrently with this decision.
C. The ’914 Patent
The ’914 patent (Ex. 1001), titled “Fully Automatic Coupler for
Excavator Arm,” relates generally to a coupler mechanism for attaching, for
example, an excavator bucket to the arm on an excavator machine. Ex.
1001, 1:25–32, Fig. 1. Figure 1 of the ’914 patent, illustrating a cut-away
view of the coupler, is reproduced below.

Figure 1 depicts coupler 10 having frame 12 including two holes 18
for attachment to the end of an excavator arm (not shown). Id. at 7:46–54.
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Frame 12 defines front jaw 24, and rear jaw 34 for receiving attachment pins
22 on an accessory 20, such as a bucket, to attach the bucket to the excavator
arm. Id. at 7:63–67.
For the coupler to secure the bucket, the ’914 patent explains that:
[a] first step in an accessory attachment is therefore usually the
engagement of an attachment pin 22 in a front jaw 24 of the
coupler by an appropriate manipulation of the excavator arm.
Then, the second attachment pin 22 needs to be engaged into the
rear jaw 26 by rotating the rear 32 of the coupler 10 downwardly.
Id. at 8:14–19. In addition, front jaw 24 has first latching mechanism 36
(highlighted in yellow), and rear jaw 26 has second latching mechanism 38
(highlighted in pink) for securing pins 22 within the respective jaws. Id. at
8:23–26. In the embodiment of Figure 1, first latching mechanism 36 acts
under the influence of gravity, whereas second latching mechanism 38 is
driven by hydraulic ram 62 and a rod (rod not shown) that attaches to hinge
pin 66. Id. at 8:31–9:42.
There are two main ways in which attachment of the bucket proceeds,
that is, two ways to attain an “attachment receiving condition,” of the
coupler. Ex. 1001, 9:61–63. In one instance, hydraulic ram 62 powers
second latching mechanism 38 into a fully closed state so that latching
mechanism 38 itself does not interfere with first latching mechanism 36,
thus allowing pin 22 to be inserted into front jaw 24. Id. at 9:63–10:8. In
another instance, a preferred condition is where the second latching
mechanism is powered into a fully open position by the hydraulic ram. Id. at
10:46–55. Best seen in Figure 3, reproduced below, with the coupler having
engaged on front pin 22 in the open position, one end 42 of first latching
mechanism 36 is hung up on flange 74 of fully open second latching
mechanism 38, consequently raising first latching mechanism 36 to permit
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entry of pin 22 into jaw 24. Id. at 10:52–56. This fully open position of
both jaws is referred to in the ’914 patent as the “default condition.” Id. at
10:58–65. Figure 3 is reproduced below.

Figure 3, above, shows a first pin engagement step. Id. at 7:17–19.
As can be appreciated from Figure 3 when the hydraulic ram (not shown)
powers second latching mechanism 38 back to a closed position, end 42 of
latching mechanism 36 falls off flange 74 and into a closed position to
secure pin 22 in jaw 24. Id. at 10:58–65.
The ’914 patent also describes blocking bar 78 that has a “blocking
position” and an “unblocking position” to, i.e., secure, and release, hook 54
in the second latching mechanism as shown, below, in Figures 2 and 4.
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Figure 4 of the ’914 patent, above, illustrates blocking bar 80,
(highlighted in green), in the “unblocked position,” of hook 54 in the second
latching mechanism.

Figure 2 of the ’914 patent, above, illustrates blocking bar 80, in the
“blocked position,” of hook 54, in the second latching mechanism.
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D. Illustrative Claim
Of the challenged claims, claims 1 and 39 are independent. Each of
dependent claims 2–23 depend, directly or indirectly, from claim 1 and
claims 40–42 depend directly or indirectly from claim 39. Claim 1
illustrates the claimed subject matter and is reproduced below:
1. A coupler having a top half for attaching to an end of an
excavator arm of an excavator and a bottom half for attaching to
an accessory; wherein:
the bottom half comprises:
a first jaw having an opening pointing generally towards the front
end of the coupler and a second jaw having an opening pointing
generally downwards with respect to the coupler;
a first latching mechanism associated with the first jaw; and
a second latching mechanism associated with the second jaw, the
second latching mechanism being powered for movement
between an open position and a closed position, wherein the first
latching mechanism has an arm extending therefrom and towards
the second latching mechanism, whereby the second latching
mechanism can hold the first latching mechanism in an open
position when it is in its own open position; and
the coupler further comprising:
a blocking mechanism that is independent of the first latching
mechanism, and being for selectively blocking the second
latching mechanism in its latching position, the blocking
mechanism being operable between a blocking position and an
unblocking position by a separate drive means, or by the
influence of gravity, operation by the influence of gravity
comprising attaining a blocking position when the top side of the
coupler is pointing generally upwards and an unblocking
position when the bottom side of the coupler is pointing generally
upwards.
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E. The Instituted Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific grounds.1
References Basis Claims Challenged
Hill 2 and Miller ’8053 § 103 1–11, 13–22, and 39–42
Hill, Miller ’805, and Miller ’1124 § 103 12
Hill, Miller ’805, and Miller ’0625 § 103 23

II. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
reasonable interpretation standard, 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 proposed, inter alia, constructions for the following claim
phrases: “a blocking mechanism that is independent of the first latching
mechanism” as recited in claim 1, and “a blocking mechanism separate
from the first latching mechanism,” recited in independent claim 39.
Pet. 9–13. In our Decision to Institute we determined constructions
consistent with the broadest reasonable construction. Inst. Dec. 8–10.
Since our determination, no further papers or evidence have been filed, and

1 Petitioner supports its challenge with a Declaration of Dr. Frank J.
Fronczak, P.E. (Ex. 1002). See infra.
2 Ex. 1003, WO 2008/031590 (March 20, 2008).
3 Ex. 1004, U.S. Patent No. 6,422,805 (July 23, 2002).
4 Ex. 1005, WO 2008/029112 (March 13, 2008).
5 Ex. 1006, U.S. Patent No. D565,062 (March 25, 2008).
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thus, we do not perceive any reason or evidence that now compels any
deviation from our initial constructions.
Accordingly, the following claim constructions apply to this Decision:
Claim Term Construction
a blocking mechanism that
is independent of the first
latching mechanism
blocking mechanism and the first latching
mechanism are independent because they do
not affect or influence movement of each
other
a blocking mechanism
separate from the first
latching mechanism
a blocking mechanism and a latch that are
individual and distinct elements

III. ANALYSIS
A. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A prima
facie case of obviousness is established when the prior art itself would
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appear to have suggested the claimed subject matter to a person of ordinary
skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
The level of ordinary skill in the art is reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579
F.2d 86, 91 (CCPA 1978).
B. Claims 1–11, 13–22, and 39–42 — Obviousness over Hill in view
of Miller ’805
Petitioner asserts that claims 1–11, 13–22, and 39–42 would have
been obvious over Hill and Miller ’805. Pet. 17. Petitioner has shown,
based on the record before us, by a preponderance of the evidence, that
claims 1–11, 13–22, and 39–42 are unpatentable as obvious over Hill in
view of Miller ’805.
1. Hill
Hill discloses coupler 10 for an excavator having frame plate 15
defining apertures 16, 18 for attachment to an excavator arm, first jaw 20
and second jaw 22 for receiving pins 24, 26 on an attachment accessory such
as an excavator bucket. Ex. 1003, 4:27–5:13, Fig. 1. Figure 1, reproduced
below, illustrates Hill’s coupler 10.
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Figure 1 of Hill, above, shows coupler 10 having latching mechanism
40 associated with first jaw 20, and second latching mechanism 30
associated with second jaw 22. Second latching mechanism 30 is powered
by hydraulic actuator 32 between an open and a closed, i.e. an unlatched and
latched, state. Id. at 5:18–20, 6:7–10. Hill explains further that in the open
state as shown in Figure 1, latching mechanism 30 causes lever 50 to attain a
holding state, keeping first latching mechanism 30 in the open state. Id. at
7:1–13.
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2. Miller ’805
Miller ’805 also discloses a coupler for an excavator arm as shown in
Figure 7 reproduced below.

As shown by the embodiment depicted in Figure 7, above, Miller ’805
discloses a coupler having two jaws, and one of the jaws having latching
mechanism 17 for securing pin 9 therein.6 Ex. 1004, 4:62–5:1. Latching
mechanism 17 is controlled by a hydraulic actuator (no reference number)
between an open and closed state. Id. Miller ’805 further discloses blocking
bar 37 that essentially acts under its own weight, and states “[i]n the
embodiment of FIG. 7, a forward end portion 35 of the blocking bar engages
within a recess 33 in a rear face of the latching hook 17 to hold the latching

6 Although we refer here to the embodiment disclosed in Figure 7, the basic
structure and function of the Miller ’805 coupler, namely latching
mechanism 17, pin 9, and hydraulic actuator, are discussed in terms of the
prior art shown in Figures 4 and 5.
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hook 17 in its latching position.” Id. at 5:58–62. Miller ’805 explains that
with blocking bar 37, if there is a hydraulic failure, latching hook 17 is
maintained in the latched position and both excavator accessory pins 9
remain engaged in the jaws of the coupler. See id. at 6:15–18.
3. Discussion
Petitioner argues that the only difference between Hill and claim 1 is
that Hill does not disclose a blocking mechanism. Petitioner contends that
Hill discloses a coupler having a first and second jaw, a first and second
latching mechanism associated with the jaws, and that the second latching
mechanism is powered by a hydraulic actuator and holds the first latching
mechanism in an open position. Pet. 17–19 (citing Ex. 1002 ¶¶ 35–39, 41;
Ex. 1003, 4:27–29, 5:11–14, 5:18–20, 5:28–31, 6:7–10, 6:16–18, 6:23–25,
6:31–7:4, 7:24–28, Fig. 1). Petitioner provides an annotated version of
Figure 1 of Hill that is reproduced below. Id. at 18–19.
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The annotated figure is representative of Petitioner’s arguments with
respect to the teachings of Hill and claim 1. Id. at 18–19. We agree with
Petitioner’s assertions regarding the teachings of Hill and find that as called
for in claim 1 Hill teaches or suggests a:
coupler having a top half for attaching to an end of an excavator
arm of an excavator and a bottom half for attaching to an
accessory; wherein:
the bottom half comprises:
a first jaw having an opening pointing generally towards the front
end of the coupler and a second jaw having an opening pointing
generally downwards with respect to the coupler;
a first latching mechanism associated with the first jaw; and
a second latching mechanism associated with the second jaw,
the second latching mechanism being powered for movement
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between an open position and a closed position, wherein the
first latching mechanism has an arm extending therefrom and
towards the second latching mechanism, whereby the second
latching mechanism can hold the first latching mechanism in an
open position when it is in its own open position
Ex. 1001, 16:2–18.
Petitioner argues that Miller ’805 also discloses a coupler for an
excavator and supplies the missing blocking mechanism for the powered
second latching mechanism as well as the claimed function of blocking the
second latching mechanism from opening. Id. at 19–22 (citing Ex. 1002 ¶¶
44–47; Ex. 1004 Abstract, 2:1–26, 3:59–4:10, 4:29–37, 4:62–66, 5:29–34,
5:52–55, 5:58–64, 6:7–18, Figs. 5, 7). Petitioner provides an annotated
Figure 7 of Miller ’805 that is reproduced below.

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The annotated figure is representative of Petitioner’s arguments with
respect to the teachings of Miller ’805 and claim 1. Id. at 18–19. We agree
with Petitioner’s assertions regarding the teachings of Miller ’805, and we
find that Miller ’805 teaches or suggests a “coupler having four fixed pin
location points, . . . being mountable in use between the bucket and the
dipper arm and comprising a first aperture and a second aperture defining
two of said points . . . power operated means for moving the latching hook
between latching and unlatched positions” (Ex. 1004, 2:1–22), “blocking
means 25 moves into blocking engagement . . . under its own weight due to
the force of gravity” (id. at 5:29–34), “[i]n the alternative preferred
embodiment shown in FIG. 7, . . .single blocking bar 37” (id. at 5:52–64),
and “gravity operated blocking means 25. . . shown in FIG. 7” (id. at 6:7–9).
Accordingly, we find that Miller ’805 teaches or suggests a:
coupler further comprising: a blocking mechanism that is
independent of the first latching mechanism, and being for
selectively blocking the second latching mechanism in its
latching position, the blocking mechanism being operable
between a blocking position and an unblocking position by a
separate drive means, or by the influence of gravity, operation by
the influence of gravity comprising attaining a blocking position
when the top side of the coupler is pointing generally upwards
and an unblocking position when the bottom side of the coupler
is pointing generally upwards.
Ex. 1001, 16:19–30.
Petitioner alleges that a person of ordinary skill in the art would have
had good reason to include Miller ’805’s gravity operated blocking bar 37 in
Hill’s coupler, because, as expressly discussed in Miller ’805, in the event of
hydraulic failure of the actuator maintaining the second latching mechanism
closed, Miller ’805’s blocking bar 37 would prevent opening of latching
mechanism 17. Pet. 22–23 (citing Ex. 1002 ¶¶ 49–50; Ex. 1004, 6:7–18;
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KSR, 550 U.S. at 416, 420). Petitioner’s Declarant, Dr. Fronczak, supports
this argument, alleging that Miller’s teachings, as well as safety concerns,
would have motivated one of ordinary skill in the art to add Miller’s
blocking bar 37 to Hill’s coupler because “if the hydraulic actuator 32 of
Hill ’590 fails or malfunctions, the powered latch may not be maintained in
a latched position, allowing the bucket or other accessory to disengage or
release from the second jaw (i.e., pin-receiving recess 22).” Ex. 1002 ¶ 50.
As cited by Dr. Fronczak, we find that Miller ’805 states that “even if there
is a hydraulic failure . . . the blocking means 25 will still prevent the latching
hook 17 moving to an unlatched position.” Ex. 1004, 6:15–18; see also Ex.
1002 ¶ 50 (citing id.). Dr. Fronczak further testifies that the blocking
mechanism 37, as it is influenced by gravity and operates independently of
the first latching mechanism, would operate in combination with Hill’s
coupler no differently than it does in Miller ’805. Id. ¶¶ 54–56.
We are persuaded by Petitioner’s rationale and explanation, and credit
Dr. Fronczak’s testimony, which are consistent with our understanding of
Hill and Miller ’805, that blocking the second latching mechanism retains
both pins of the attachment, such as a bucket, engaged in the coupler jaws
and improves the safety of Hill’s device in a way that would have been
recognized by an ordinary artisan at the time of invention of the ’914 patent.
Ex. 1004, 6:15–18; Ex. 1002 ¶ 50. We find Dr. Fronczak’s reasoning
persuasive, that the purpose of blocking the second latching mechanism, as
shown and described in Miller ’805, ensures that the excavator bucket
remains entirely secured even in the event of a hydraulic failure, and would
have been apparent at the time of filing of the ’914 patent to one of ordinary
skill in the art. Ex. 1002 ¶¶ 50–51.
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Petitioner provides similar arguments and evidence regarding the
teachings of Hill and Miller ’805 and the elements of independent claim 39.
Pet. 41–46 (citing Ex. 1002 ¶¶ 106–110, 112–114; Ex. 1003, 5:11–14, 5:18–
20, 5:28–31, 6:7–10, 6:16–18, 6:23–25, Fig. 1; Ex. 1004 Abstract, 2:1–26,
3:59–4:10, 4:29–37, 4:62–66, 5:29–34, 5:52–55, 5:58–64, 6:7–18, Figs. 5,
7). Petitioner provides an annotated Figure 1 of Hill that is reproduced
below.

The annotated figure illustrates Petitioner’s position regarding the
teachings of Hill and claim 39. Pet. 42. We agree with Petitioner’s
assertions regarding the teachings of Hill and find that Hill teaches or
suggests a:
coupler for attaching an excavator arm and an accessory,
comprising: a first jaw having an opening pointing generally
towards the front end of the coupler; a second jaw having an
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opening pointing generally downwards with respect to the
coupler; a first latching mechanism associated with the first jaw;
a second latching mechanism associated with the second jaw, the
second latching mechanism being selectively moveable between
an open position and a closed position.
Ex. 1001, 19:24–20:7.
Petitioner provides an annotated Figure 7 of Miller ’805 that is
reproduced below.

The annotated figure is representative of Petitioner’s arguments with
respect to the teachings of Miller ’805 and claim 39. Id. at 44–45. We agree
with Petitioner’s assertions regarding the teachings of Miller ’805, and we
find that as called for in claim 39 Miller ’805 teaches or suggests
a blocking mechanism separate from the first latching
mechanism and movable between a blocking position preventing
the second latching mechanism from moving from its closed
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position and a non-blocking position permitting the second
latching mechanism to move between the closed and open
positions.
Ex. 1001, 20:8–13.
Petitioner also asserts the same rationale for its proposed combination
of Hill and Miller ’805. Pet. 46–4 (citing Ex. 1002 ¶¶ 116–122; Ex. 1003,
5:23–24, 13:12–20; Ex. 1004, 6:7–18, Fig. 7; KSR, 550 U.S. at 416–420).
For the reasons stated above, we are persuaded by Petitioner’s asserted
rationale, which are consistent with our understanding of Hill and Miller
’805.
On this record, we are persuaded that the combination of Hill and
Miller ’805 would include a coupler with a blocking structure and function
that meets all the elements of claims 1 and 39, including selectively blocking
the second latching mechanism in a “blocking position.” The evidence
presented by Petitioner is persuasive that one of ordinary skill in the art
would have used Miller’s blocking structure in combination with Hill’s
coupler to maintain the second latching mechanism securely in place
improving the safety of the coupler such that in the event of hydraulic failure
the powered second latching mechanism does not release the excavator pins,
and the bucket is maintained in an entirely secured manner with the coupler.
We have also reviewed each of the challenged dependent claims in
light of the combination of Hill and Miller ’805, and we find that the cited
portions of Hill and Miller ’805 teaches or suggests the elements of claims
2–11, 13–22, and 40–42. Pet. 25–41 (citing Ex. 1002 ¶¶ 58–66, 68, 70, 72–
76, 83–87, 89–93, 95, 96, 98; Ex. 1003, 4:27–31, 5:12–13, 5:23–26, 6:4–10,
6:16–32, 10:18–23, 13:12–20, Figs. 1, 2, 5, 18, 19; Ex. 1004, 2:1–5, 4:23–
28, 5:23–29, 5:52–67, Figs. 1, 7, 8), 49–53 (citing Ex. 1002 ¶¶ 124–125,
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127–133; Ex. 1003, 6:4–10, 6:16–20, 8:25–27, Figs. 1, 2, 6; Ex. 1004, 5:23–
29, 5:52–64, 6:7–9, 8:6–17, Figs. 7, 12(2), 12(4)). Petitioner’s asserted
rationales for the challenged dependent claims are also persuasive on the
record presented. See id.
For the foregoing reasons, we agree with, and adopt as our own,
Petitioner’s rationale to combine Hill and Miller ’805. We further determine
that Petitioner has demonstrated by a preponderance of the evidence that
claims 1–11, 13–22, and 39–42 of the ’914 patent are obvious over Hill and
Miller ’805.
C. Claims 12 and 23 — Obviousness over Hill in view of Miller ’805
and Miller ’112 (Claim 12), and Hill in view of Miller ’805 and
Miller ’062 (Claim 23)
Petitioner argues that claim 12 is obvious over the combination of
Hill, Miller ’805, and Miller ’112, and that claim 23 is also obvious over
Hill, Miller ’805, and Miller ’062. Pet. 53–59.
Petitioner has shown, based on the record before us, by a
preponderance of the evidence, that claim 12 is unpatentable as obvious in
view of Hill, Miller ’805, and Miller ’112, and that claim 23 is also obvious
over Hill, Miller ’805, and Miller ’062.
1. Miller ’112
Figure 1 of Miller ’112, reproduced below, discloses coupler 10 for
attaching an excavator bucket to an excavator arm.
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Figure 1 of Miller ’112, above, is a side cut-away view showing
coupler 10 having two holes 20 for attaching the coupler to an excavator arm
(not shown), a rear jaw 22 and a front jaw 24 for engaging the pins of an
accessory such as an excavator bucket. Ex. 1005, 22–23. Miller ’112
explains that latch 34 associated with front jaw 24 “is adapted selectively to
close the front jaw 24 for securing an attachment pin within the front jaw
24.” Id. at 24:13–14. Miller ’112 also discloses an embodiment having the
front latch painted a high-visibility color:
the second latch 34, in preferred embodiments the second latch
34 is painted in a high visibility colour such as orange or red.
That is preferred since the second latch is one of the safety
features of the coupler that will nearly always be visible from the
cab of the excavator - it at least partially extends across the
opening of the front jaw 24, and that opening generally faces
towards the cab during normal use of accessories. The high
visibility second latch 34, therefore, acts as a visible marker for
confirming the correct or secure attachment of an accessory to
the coupler 10, and that visual aid can be seen by the excavator
operator from the within his cab.
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Id. at 26:21–28 (emphasis added).
2. Miller ’062
Miller ’062 is a design patent and discloses an “ornamental design for
a coupler for an excavator.” Ex. 1006, 1. The profile of the front jaw of the
coupler is shown in solid lines of Miller ’062’s Figure 2, reproduced below.

As illustrated, above, Miller ’062’s Figure 2 shows a “coupler for releasably
attaching an accessory to an arm of an excavator,” and the patent claims
only the portion of the design illustrated in solid lines, “[t]hose features
shown in broken lines form no part of the claimed design.” Id.
3. Discussion
Claim 12 of the ’914 patent depends directly from claim 1 and reads
as follows:
12. The coupler of claim 1, wherein a part of the first latching
mechanism is visible in the jaw when the first latching
mechanism is in a jaw-closing position, and the part is painted
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in a high-visibility colour, or in a contrasting colour to the jaw,
for making it more readily visible from the cab of the excavator
through the opening of the jaw.
(Emphasis added). The first latching mechanism recited in claim 12 is, as
shown in the drawings of the ’914 patent, understood as associated with the
front jaw of the claimed coupler and is consistent with the disclosure of front
jaw 24 in Miller ’112. Compare Ex. 1002, Figs 1–2, with Ex. 1005, Figs 1–
2. Petitioner asserts, and we find, that Miller ’112 discloses the additional
limitation of a part of the first latching mechanism being visible from the cab
of an excavator and “painted in a high-visibility colour,” as called for in
claim 12. Pet. 54–55 (citing Ex. 1005, 3:6-7, 26:21-28, Fig. 17; Ex. 1002 ¶
79). Petitioner reasons that a person of ordinary skill in the art would have
known to use a highly visible color for part of the visible latch to confirm
attachment and “doing so would enhance the safety of the coupler by
allowing the operator in the excavator cab to determine whether the bucket
or other accessory is properly attached to the coupler.” Pet. 55 (citing Ex.
1005, 26:21–28; Ex. 1002 ¶ 79).
Claim 23 also depends directly from claim 1 and presents certain
additional limitations:
23. The coupler of claim 1, wherein the front jaw has a
ridge or lip provided in an upper wall of its profile, wherein the
upper wall of the front jaw’s profile extends further forwards,
relative to the frame of the coupler, than the lower wall of that
profile so as to overhang the lower profile, wherein the lip or
ridge is located in the overhanging area of that upper wall, and
wherein the gap between the bottom of the ridge or lip and the
free end of the lower wall of the profile of the front jaw has a
length that is no less than the distance between that lower wall
and that upper wall when instead measured diametrically
therebetween.
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Patent 8,112,914 B2
25
(Emphasis added). Petitioner alleges, and we find, that Hill discloses an
upper wall of the front jaw extending “further forwards” and “overhanging”
the lower wall, and that Miller ’062 discloses a “lip” in the profile of the
upper and lower walls. Petitioner contends that a person of ordinary skill in
the art would have had a reason to combine Hill and Miller ’062 and locate a
lip “in the upper and lower walls of the front jaw . . . which would provide
some resistance to a bucket pin sliding out of the jaw.” Pet. 56–57 (citing
Ex. 1002 ¶ 101; KSR, 550 U.S. at 420). Relying on its Declarant, Dr.
Fronczak, Petitioner also asserts that the claimed “gap” is a structural
condition which must exist for the front jaw to receive an accessory pin,
“[i]ndeed, if the distance of the gap between the lip and the lower wall was
less than the distance between the lower and upper walls, the accessory pin
would be obstructed from entering the jaw.” Ex. 1002 ¶ 105; Pet. 59.
Based on the evidence presented in this proceeding, including giving
some weight to Dr. Fronczak’s testimony, we agree with, and adopt as our
own, Petitioner’s rationale to combine Hill, Miller ’805, and Miller ’112, as
well as Hill, Miller ’805, and Miller ’062. We further determine that
Petitioner has demonstrated by a preponderance of the evidence that these
combinations would have rendered dependent claims 12 and 23 obvious.
IV. SUMMARY
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–23 and 39–
42 of the ’914 patent are unpatentable over either Hill and Miller ’805; Hill,
Miller ’805, and Miller ’112; or Hill, Miller ’805, and Miller ’062.
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Patent 8,112,914 B2
26
V. ORDER
For the reasons given, it is
ORDERED that claims 1–23 and 39–42 of the ’914 patent are held
unpatentable; and
FURTHER ORDERED that, because this is a Final Written 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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Patent 8,112,914 B2
27
For PETITIONER:

Mark D. Sweet
Timothy McAnulty
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
mark.sweet@finnegan.com
timothy.mcanulty@finnegan.com

For PATENT OWNER:

John E. Thomas
Brian Shaw
Harter Secrest & Emery LLP
jthomas@hselaw.com
bshaw@hselaw.com