Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 1 of 5 PageID #: 39118
`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 1 of 5 PagelD #: 39118
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`EXHIBIT 8
`EXHIBIT 8
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`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 1 of 5 PagelD #: 39118
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`EXHIBIT 8
`EXHIBIT 8
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`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 2 of 5 PageID #: 39119
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Reexam of: U.S. Patent No. 7,523,995
`to Rio et al.
`
`Confirmation No.: To Be Assigned
`
`Reexam Control No.: To Be Assigned
`
`Art Unit: To Be Assigned
`
`Filed: Herewith
`
`Examiner: To Be Assigned
`
`For: MILLING MACHINE
`
`Request for Reexamination of U.S. Patent No. 7,523,995
`under 35 U.S.C. §§ 302 and 1.510
`
`Ex Parte Reexamination
`Attn: Central Reexamination Unit
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`Requester submits this Request for Reexamination, under 35 U.S.C. § 302 and 37
`
`C.F.R. § 1.510, of United States Patent No. U.S. Patent No. 7,523,995 to Rio et al. ("the
`
`'995 patent"), titled "Milling Machine." In accordance with 37 C.F.R. § 1.510(b)(4), a
`
`copy of the '995 patent is attached hereto. The '995 patent is assigned to Caterpillar Inc.
`
`according to United States Patent and Trademark Office ("USPTO") records at the time
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`of this request.
`
`Requester respectfully requests that the USPTO order ex parte reexamination of
`
`claims 16, 43, and 45-63. Claims 45-63 of the '995 patent are not patentably distinct from
`
`the issued claims in U.S. 7,140,693 ("the '693 patent") in view of the respective prior art
`
`references cited herein. Therefore, Requester respectfully requests that claims 45-63 of
`
`the '995 patent be rejected on the grounds of nonstatutory obviousness-type double
`
`
`
`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 3 of 5 PageID #: 39120
`
`Request for Reexamination of
`U.S. Patent No. 7,523,995
`
`-
`
`"The controller 32 includes a plurality of input interfaces for receiving
`
`information and command signals from various switches and sensors associated
`
`with the work machine 10 and a plurality of output interfaces for sending control
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`signals to various actuators associated with the work machine 10. Only those
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`input and output interfaces pertinent to the instant inventive embodiments are
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`described below, but the suitably programmed controller 32 may serve many
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`additional similar or wholly disparate functions as is well-known in the art." '995
`
`Patent, 6:56-64.
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`Based on these disclosures in the '995 patent, a POSA would have understood that the
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`controller means is a controller configured to communicate with the actuators to move the
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`wheels/tracks. Orr Declaration, ¶¶106-107. Accordingly, "controller means" should be construed
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`to include a controller configured to communicate with the first actuatable means and the second
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`actuatable means to move the ground engaging unit.
`
`F.
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`rotation sensor means (Claim 49)
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`1.
`
`Function
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`The rotation sensor means of claim 49 is limited by the function "producing an alignment
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`signal indicative of the rotational position of said one ground engaging unit relative to said
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`machine frame" and "delivering said alignment signal to said controller means." '995 Patent,
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`14:61-65. A POSA would have understood that this function corresponds to a sensor that
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`generates a signal to indicate the rotation angle of at least one ground engaging unit relative to
`
`the machine frame. Orr Declaration, ¶109.
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`2.
`
`Structure
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`The '995 patent discloses that the structure performing this function is the rotation sensor
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`75. Orr Declaration, ¶¶110-111. Particularly, the '995 patent discloses:
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`-67-
`
`
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`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 4 of 5 PageID #: 39121
`
`Request for Reexamination of
`U.S. Patent No. 7,523,995
`
`- "A rotation sensor 75, for example, a rotary encoder, may be associated with the
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`second actuator 44 or with a connected rotating component to deliver signals
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`representing the rotation angle of the one ground engaging unit 20 relative to the
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`machine frame 12." '995 Patent, 6:6-11.
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`-
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`"The ground engaging unit rotational position signal 124 is from the rotation
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`sensor 75 associated with the second actuator 44 indicating the instantaneous
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`rotation angle of the one ground engaging unit 20 relative to the machine frame
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`20." '995 Patent, 7:23-27.
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`- "As counter-rotation begins, the rotation sensor 75 sends rotation position signals
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`124 to the controller 32." '995 Patent, 8:38-39.
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`-
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`"Accordingly, with the mere addition of sufficient rotation sensors and actuators it
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`is possible for a programmed controller 32 to rotate and steer each wheel or track
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`section either independently or in coordination with each other[.]" '995 Patent,
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`9:37-40.
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`Based on these disclosures in the '995 patent, a POSA would have understood that the
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`rotation sensor means is a rotation sensor, such as a rotary encoder, that can indicate the rotation
`
`angle of a ground engaging unit relative to the machine frame and provide position signals to the
`
`controller means. Orr Declaration, ¶¶110-111. Accordingly, "rotation sensor means" should be
`
`construed to include a rotation sensor "that can indicate the rotation angle of a ground engaging
`
`unit relative to the machine frame and provide position signals to the controller means."
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`G.
`
`pivot sensor means (Claims 51 and 63)
`
`1.
`
`Function
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`The pivot sensor means of claims 51 and 63 is limited by the function "producing a
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`position signal indicative of the position of said at least one ground engaging unit relative to said
`
`-68-
`
`
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`Case 1:17-cv-00770-JDW Document 428-8 Filed 06/28/24 Page 5 of 5 PageID #: 39122
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`Additionally, claims 16 and 43 were not challenged in the related IPR proceedings.
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`Accordingly, Requester is not estopped from raising this SNQ (SNQ 22) regarding the
`
`Request for Reexamination of
`U.S. Patent No. 7,523,995
`
`obviousness of claims 16 and 43 under 35 U.S.C. § 103.
`
`F.
`
`No Rule 1.510(f) Power of Attorney Is Needed
`
`A power of attorney form PTO/SB/81C attached.
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`XIII. CONCLUSION
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`Claims 45-63 of the '995 patent are not patentably distinct over the claims of the '693
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`patent in view of the additional prior art cited herein. Additionally, Claims 16 and 43 are
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`unpatentable over Bitelli in view of Feliz, Skotnikov, and McCutcheon.
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`Requester respectfully requests that this Request, for Ex Parte Reexamination, of the
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`'995 patent be granted by the U.S. Patent and Trademark Office.
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`Prompt and favorable consideration of this Request for Reexamination is respectfully
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`requested.
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox PLLC
`
`/Graham C. Phero/
`
`Graham C. Phero, Reg. No. 64,228
`Practitioner for Third-Party Requester
`
`Date: April 5, 2024
`
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`- 264 -
`
`
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