By Peter Reap, J.D., LL.M.
The Patent Trial and Appeal Board did not err in determining through inter partes review that Allied Erecting and Dismantling’s patent for a tool attachment system would have been obvious in view of the prior art, the U.S. Court of Appeals for the Federal Circuit has decided (Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC, June 15, 2016, Wallach, E.). Thus, the ruling of the Board was affirmed.
Allied’s U.S. Patent No. 7,121,489 ("the ’489 patent"), entitled "Multiple Tool Attachment System," is directed to heavy machinery tools used for construction and demolition that can be attached to a universal body, which in turn can be attached to "multiple tools, such as a heavy-duty metal cutting shear, a plate shear, a concrete crusher, [or] a grapple." One purpose of the ’489 patent is "to provide a multiple tool attachment system which is easily converted between a plurality of distinct tools." To achieve this objective, the ’489 patent describes a "quick change feature" that enables different demolition tools to be efficiently substituted for one another.
The PTAB found that claims 1–21 of the ’489 patent would have been obvious over German prior art reference DE 297 15 490 U1 ("Caterpillar") and U.S. Patent No. 4,283,866 ("Ogawa"). Caterpillar discloses a demolition tool with a housing that can be attached to a piece of construction equipment such as an excavator, and has "two jaws that work together [that] can be pivoted relative to each other." By immobilizing the first jaw, Caterpillar decouples the pivot pin from the mounting mechanism as suggested by other prior art. Caterpillar’s design thereby enables the quick-change functionality of the jaw sets.
Ogawa discloses "[a] convertible bucket attachment for excavation and clasping." One purpose of Ogawa is to provide for a greater degree of movement between the back and fore buckets of the apparatus.
Genesis Attachments filed a petition for inter partes reexamination, asserting that Allied’s ’489 patent was unpatentable. During reexamination, Allied amended claims 1, 7, and 17–19, and added new claims 20 and 21. A USPTO examiner allowed the amended claims, withdrew his initial rejections, and confirmed the patentability of claims 1–21.
On appeal, the PTAB concluded that claims 1–3, 13, 14, and 17–20 would have been obvious over Caterpillar in view of Ogawa. Because the PTAB reversed the examiner’s decision finding the amended claims patentable, it noted that its decision constituted a new ground of rejection and allowed Allied to reopen prosecution or request rehearing.
Allied elected to reopen prosecution and submitted a second round of amendments to claims 1, 7, and 17–19. The examiner found the amendments did not overcome the PTAB’s ground of rejection based on Caterpillar and Ogawa. The PTAB then issued a new decision affirming the examiner’s rejections. Like its Decision on Appeal, the PTAB again found that "Caterpillar ‘teaches one of ordinary skill in the art the desirability of simplifying disassembly of jaws, and discloses a mechanism for doing so.’" The PTAB also found that Ogawa provides two movable blades to enable a wide range of angular movement. Accordingly, the PTAB concluded that based on these disclosures, a person of ordinary skill in the art could have modified Caterpillar to provide for a "wide range of angular movement." This appeal followed.
At issue is whether it would have been obvious to modify Caterpillar to make both blades movable as taught by Ogawa, while retaining Caterpillar’s quick change functionality, the appellate court said. First, Allied challenged the PTAB’s finding of a motivation to combine Caterpillar and Ogawa. Specifically, Allied argued that "the [PTAB] relied on improper hindsight, in the absence of any valid reasoning or supporting evidence, for its obviousness conclusion." Second, Allied contended that "Caterpillar expressly teaches away from combining its teachings with Ogawa."
According to Allied, contrary to the PTAB’s assertion, "making the second jaw in Caterpillar movable involves a massive, nonobvious reconstruction of the device that not only changes its principle of operation, but renders the device inoperable as a result." Contrary to Allied’s position, it is not necessary that Caterpillar and Ogawa be physically combinable to render obvious the ’489 patent, the Federal Circuit determined.
Upon determining that side walls 13a of Caterpillar serve a similar quick release function as the bridge housing of the ’489 patent, it would have been obvious to a person of ordinary skill in the art to modify the immobilized jaw of Caterpillar (first jaw 13) in order to provide for a wider range of motion as taught by Ogawa, to make the jaw set more efficient, according to the court. For example, a wider range of motion would augment the jaw sets’ grasping capabilities. As articulated by the PTAB, a skilled artisan could modify Caterpillar in view of Ogawa by treating the first jaw like the second. That is, by pivoting the first jaw around the swivel bearing. Such a design allows for a greater degree of movement between the jaws, without impacting the quick change functionality (i.e., the ability to mount and disassemble the jaw in a simple manner) provided by the holding fixtures via side walls 13a.
Allied also argued that Caterpillar expressly teaches away from Ogawa because "the main pivot pin function[s] as both the pivot point for the jaws and the means for attaching the jaws to the frame." According to Allied, because "the teachings of Ogawa would encourage a [person having ordinary skill in the art] to do exactly what Caterpillar says they should not do––have the main pivot pin for both jaws also mount the jaws to the frame," "Caterpillar undisputedly teaches away from the combination with Ogawa."
Caterpillar does not expressly teach away from Ogawa, the appellate court ruled. Contrary to Allied’s contention that the PTAB incorrectly relied on Ogawa because its precise structure (i.e., two separate hydraulic cylinders) is criticized by Caterpillar, the disadvantage underscored by Caterpillar does not militate against finding the combination proper. There is no teaching away from the combination of Caterpillar and Ogawa because the combination does not utilize the pivot pin attachment mechanism of Ogawa, the court reasoned. There is no teaching away in Caterpillar from using the Ogawa feature of two movable jaws.
The PTAB grounded its modification of Caterpillar on Ogawa’s teaching of two movable blades and "wide range of angular movement." Thus, contrary to Allied’s contention, Ogawa’s disclosure of the need for two separate cylinders is extraneous to the PTAB’s decision. Allied’s remaining arguments were unpersuasive.
The case is No. 2015-1533.
Attorneys: Daniel H. Brean (The Webb Law Firm) for Allied Erecting and Dismantling Co., Inc. Ryan Wayne Massey (Harness, Dickey & Pierce, PLC) for Genesis Attachments, LLC.
Companies: Allied Erecting and Dismantling Co., Inc.; Genesis Attachments, LLC
MainStory: TopStory Patent FedCirNews
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