Paper No. 44
`Entered: September 9, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MOTIVEPOWER, INC.,
`Petitioner,
`
`v.
`
`CUTSFORTH, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00274
`Patent 7,990,018 B2
`_______________
`
`
`
`Before TRENTON A. WARD, MIRIAM L. QUINN, and CARL M. DeFRANCO,
`Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
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`IPR2013-00274
`Patent 7,990,018 B2
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`A. Background
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`I.
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`INTRODUCTION
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`MotivePower, Inc., Petitioner, filed a Petition to institute an inter partes
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`review of all the claims 124 (the “challenged claims”) of U.S. Patent No.
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`7,990,018 B2 (Ex. 1001, “the ’018 patent”) pursuant to 35 U.S.C. §§ 311–19.
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`Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 6 (“Prelim.
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`Resp.”). The Board granted the Petition and instituted trial for all asserted claims.
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`Paper 7 (“Dec.”). Although Petitioner proposed nine grounds of unpatentability,
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`we instituted trial on only the following ground: Claims 1–24 would have been
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`obvious in view of in view of Bissett,1 Kartman,2 and Ohmstedt.3 Dec. 25.
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`During trial, Cutsforth, Inc., Patent Owner, filed a Patent Owner Response
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`(“PO Resp.”) addressing the grounds involved in trial and relying on the
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`Declaration of Dr. Thomas A. Keim (Ex. 2019). Paper 12. Petitioner filed a Reply
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`to Patent Owner’s Response. Paper 21 (“Pet. Reply”). An oral hearing was held
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`on September 16, 2014, and a transcript of the hearing is included in the record.
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`Paper 30 (“Tr.”).
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`On October 30, 2014, the Board issued a Final Written Decision in
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`accordance with 37 C.F.R. § 42.73. Paper 31 (“Final Dec.”). The Board
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`concluded that Petitioner had established, by a preponderance of the evidence, that
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`claims 1–24 of the ’018 patent would have been obvious over Bissett, Kartman,
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`and Ohmstedt. Final Dec. 32. Patent Owner appealed the decision to the United
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`1 U.S. Patent No. 3,432,708 (Ex. 1005) (“Bissett”).
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`2 U.S. Patent No. 5,043,619 (Ex. 1004) (“Kartman”).
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`3 U.S. Patent No. 3,864,803 (Ex. 1003) (“Ohmstedt”).
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`IPR2013-00274
`Patent 7,990,018 B2
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`States Court of Appeals for the Federal Circuit. Paper 35.
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`On January 22, 2016, the Federal Circuit issued a decision vacating and
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`remanding the case to the Board. Cutsforth, Inc. v. MotivePower, Inc., 636 F.
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`App’x 575, 578 (Fed. Cir. 2016) (unpublished) (nonprecedential) (entered herein
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`as Paper 38). The Federal Circuit held “that the Board’s Final Written Decision
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`does not provide enough explanation to support its finding of obviousness.” Id.
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`“When the Board determines that modifications and combinations of the prior art
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`render a claimed invention obvious, the Board must fully explain why a person of
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`ordinary skill in the art would find such changes obvious.” Id. at 578–79. As a
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`result, the Federal Circuit vacated the Board’s determinations that claims 1–24 of
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`the ’018 patent were not patentable and remanded the case to the Board “for
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`proceedings appropriate to the administrative process.” Id. at 579 (citing In re
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`Sang-Su Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002)). On February 29, 2016, the
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`Federal Circuit issued a formal mandate, returning the case to the Board. Paper 39.
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`On March 29, 2016, the Board held a conference with the parties to discuss
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`Patent Owner’s request to submit additional briefing in light of the remand and to
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`discuss the Petitioner’s opposition to such additional briefing. Paper 37, 2. During
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`the conference, Patent Owner indicated that it was seeking additional briefing
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`because the “record is without adequate briefing as to whether one of skill would
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`have made the changes that are contemplated as they relate to a spring that was at
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`issue and relating to claim 5.” Ex. 2064, Transcript of March 29, 2016 conference
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`call, 6:15–18. Patent Owner stated that “a remand typically . . . deserves briefing
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`on the point of the remand to make sure the record is full and there could be a
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`fulsome review of the issues that are thought by the Appellate Court to . . . need[]
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`further review.” Id. at 7:20–25. Patent Owner further argued that additional
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`briefing was needed because the record was “devoid of arguments . . . from either
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`Patent 7,990,018 B2
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`side on this issue”; thus, Patent Owner requested “briefing without evidentiary
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`submission by either party, a page limited briefing of simultaneous submission.”
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`Id. at 8:9–11, 11:12–14.4
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`We granted Patent Owner’s request to file additional briefing. Paper 37, 3.
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`More particularly, we authorized additional briefing limited to the issue raised by
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`Patent Owner, namely, the design choice issue with respect to claim 5 of the ’018
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`patent. Id. In accordance with the Board’s Order, both Petitioner and Patent
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`Owner filed their briefs on April 15, 2016. See Paper 40 (“Petitioner Remand
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`Br.”) and Paper 41 (“PO Remand Br.”). Subsequently, Patent Owner requested
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`authorization to file a Reply Brief to address arguments presented in Petitioner’s
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`Remand Brief. The Board granted the request and authorized both parties to file a
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`reply brief. Accordingly, the parties filed reply briefs on April 29, 2016. See
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`Paper 42 (“PO Remand Reply”) and Paper 43 (“Pet. Remand Reply”).
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`For the reasons that follow, we determine that Petitioner has demonstrated,
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`by a preponderance of the evidence, that claims 1–4, 6–7, and 9–24 of the ’018
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`patent would have been obvious over Bissett, Kartman, and Ohmstedt.
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`Additionally, we determine that the Petitioner has failed to establish that claims 5
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`and 8 of the ’018 patent are unpatentable.
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`B. Related Proceedings
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`Petitioner indicates that the ’018 patent is currently the subject of a co-
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`pending federal district court case, Cutsforth, Inc. v. MotivePower, Inc., No. 0:12-
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`cv-01200-SRN-JSM (D. Minn.). Pet. 2; Paper 5, 2. In addition, patents related to
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`4 We note that neither party requested authorization to submit new evidence after
`the remand.
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`IPR2013-00274
`Patent 7,990,018 B2
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`the ’018 patent, as listed below, have been the subject of inter partes review as
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`follows:
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`U.S. Patent No.
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`Inter Partes Proceeding
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`7,122,935 B2
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`IPR2013-00267
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`7,141,906 B2
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`IPR2013-002685
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`7,417,354 B2
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`IPR2013-00270
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`8,179,014 B2
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`IPR2013-00272
`
`
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`C. The ’018 Patent
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`The ’018 patent generally relates to a brush holder assembly for use in
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`electrical devices and slip ring assemblies. Ex. 1001, 1:2527. In particular, the
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`patent describes that a brush is used in an electrical device to pass electrical current
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`from a stationary contact to a moving contact surface, and vice versa. Id. at
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`1:3133. The brush is typically in contact with a moving surface; thus, the surface
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`of the brush wears down, reducing the quality of the electrical contact. Id. at
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`1:4262. The ’018 patent describes that when the brush is so worn that it requires
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`replacement, the moving contact surface may need to be halted, which may be
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`5 On April 6, 2016, the Federal Circuit issued a decision reversing the Board’s
`decision in IPR2013-00268 because “the Board erred in construing the claim terms
`‘projection extending from’ and ‘brush catch coupled to the beam.’” Cutsforth,
`Inc. v. Motivepower, Inc., 643 F. App'x 1008, 1009 (Fed. Cir. 2016). As neither of
`these claim terms is at issue here, the Federal Circuit’s decision has no effect on
`this proceeding.
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`Patent 7,990,018 B2
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`difficult or expensive. Id. at 2:811. Alternatively, the ’018 patent describes that
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`maintaining the relative motion during replacement of the brush may be unsafe
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`because of the risk of arcing and an accidental short circuit in the electrical
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`components. Id. at 2:1215. The patent describes that it would be an advantage to
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`remove or replace a worn brush without stopping the moving parts involved. Id. at
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`2:16–20.
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`One embodiment of the ’018 patent describes a brush holder assembly with
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`a mounting bracket in an “engaged” configuration, relative to a lower mount block.
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`Id. at 2:66–3:2. For example, Figure 1 of the ’018 patent is reproduced below.
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`
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`Figure 1 illustrates an “engaged” configuration where brush 12, surrounded
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`by brush box 10, contacts a conducting surface because brush spring 24 pushes the
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`brush toward the bottom edge of box 10. Id. at Fig.1, 4:2745, 6:2037.
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`According to Figure 1 above, brush box 10 is affixed to beam 14, which is affixed,
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`via a hinged attachment, to lower mount block 16. Id. at 4:34–41. In the
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`“engaged” position, as shown in Figure 1, a conductive path is formed from brush
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`12 through brush conductor 26, terminal 28, and conductor strap 34 (not in Figure
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`Patent 7,990,018 B2
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`1 but shown in Figure 2, reproduced below). Id. at 7:11–14.
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`The ’018 patent further describes a “disengaged” configuration, shown in
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`particular with respect to Figure 2, reproduced below.
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`
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`As illustrated in Figure 2 above, a hinging action takes place at certain pivot
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`lines, such as pivot line “X,” about which beam 14 moves with respect to lower
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`mounting block 16. Id. at 6:4656. In the disengaged position, conductor strap 34
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`breaks contact with terminal 28, thus interrupting the current flow before the brush
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`breaks contact with the conductive surface. Id. at 10:4763.
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`Claim 1, reproduced below, is illustrative of the claimed subject
`
`matter:
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`1. A brush holder assembly for holding a brush having a
`conductive element, the brush holder assembly comprising:
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`an elongate mounting block having a major axis, an upper end and
`a lower end, and first and second outer side surfaces substantially
`parallel to said major axis, and including a stationary brush release
`proximate said lower end; and
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`IPR2013-00274
`Patent 7,990,018 B2
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`a brush holder component adapted for removably mounting to the
`mounting block, the brush holder component comprising a brush box
`and a channel for receiving a portion of the mounting block therein,
`the channel including first and second inner side surfaces;
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`the brush holder component further comprising a brush catch
`having a first position and a second position, the brush catch
`preventing sliding movement of a brush within the brush box in the
`first position, and the brush catch permitting sliding movement of a
`brush within the brush box in the second position;
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`wherein the stationary brush release is positioned on the mounting
`block so that when the brush holder component is mounted on the
`mounting block, the stationary brush release engages with the brush
`catch, moving the brush catch into the second position.
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`Id. at 17:6418:20.
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`A. Claim Construction
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`II. ANALYSIS
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`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable construction in light of the specification of
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`the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC
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`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
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`reasonable interpretation standard as the claim interpretation standard to be applied
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`in inter partes reviews). Claim terms also are given their ordinary and customary
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`meaning as would be understood by one of ordinary skill in the art in the context of
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`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Also, we must be careful not to read a particular embodiment appearing in
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`the written description into the claim if the claim language is broader than the
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`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
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`(“limitations are not to be read into the claims from the specification”).
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`In the Decision on Institution, we interpreted the term “mounting block” of
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`the ’018 patent to mean “a base for affixing to another structure.” Dec. 8.
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`Furthermore, we interpreted the term “removably mounting” to mean “mounting in
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`a manner that is not permanent.” Id. at 10. Patent Owner argues that the
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`constructions should be modified. Each of these terms is analyzed in turn.
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`1. “mounting block”
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`Patent Owner argues that the construction for “mounting block” must reflect
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`the “specification’s requirement that the mounting block must be fixed to a
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`location.” PO Resp. 8. In support of this argument, Patent Owner relies on Figure
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`15B of the ’018 patent as depicting that lower mounting block 16, i.e., the
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`“mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 910.
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`Patent Owner further points to descriptions of various embodiments of the
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`attachment of the “mounting block” to a base or to a location. Id. We determine
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`that neither Figure 15B nor the statements in the specification identified by Patent
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`Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show
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`that the attachment excludes any ability to adjust the block. Indeed, the bottom
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`surface of the mount is not depicted, leaving us to speculate concerning the shape
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`of mount holes 96, because a round hole would suggest there is no adjustability,
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`while a slotted or elongated hole would suggest adjustability. But see Ex. 1001,
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`Fig. 9 (not cited by Petitioner, but confirming that elongated holes 96 are
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`contemplated). The lack of description and depiction of the shape of the holes
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`compels us to reject Patent Owner’s characterization of Figure 15B as supporting a
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`“fixed” or non-moveable attachment. Furthermore, as for the descriptions of how
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`the mount is attached, the specification uses the word “secure” and describes
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`various embodiments of the attachment, none of which requires non-movability of
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`the mount after the brush holder component is installed. See Ex. 1001, 12:35–36
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`(bolts and washers “secure the lower mount block 16 to a mount base” (emphasis
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`added)), 14:5658 (“mount holes 96 may include threading or other elements that
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`allow for attachment to a mount base”), 16:2528 (“in other embodiments, a
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`welded, keyed, pinned or other attachment scheme may be used to secure the lower
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`mount block 16 to a mount base” (emphasis added)). In fact, the specification
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`makes a point of not limiting the attachment of the mount to any particular method,
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`fixed or not fixed. See id. at 12:37–41 (“or other attachment scheme may be used
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`to secure the lower mount block 16 to a mount base near a moving conductive
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`surface or in position to move relative to a conductive surface”). Nor does the
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`language of the claim recite any method of attachment that limits the mounting
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`block to something that cannot be adjusted, shifted, re-positioned, or otherwise
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`moved, after attachment to the base.
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`Patent Owner further proposes that the written description teaches that all
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`embodiments include a “fixed” mounting block, and, therefore, the “mounting
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`block” should be so construed. PO Resp. 10–12. The specification states: “with
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`the lower mount block 16 being the only portion that must be ‘fixed’ to a location,
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`attachment steps are simplified.” Ex. 1001, 15:1315. We are not persuaded by
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`Patent Owner’s argument. Although the specification uses the word “fixed” with
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`respect to lower mount block 16, that portion of the specification is focused on
`
`describing “the present embodiment” of a lower mount block shown in Figure 14,
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`which illustrates a lower mount block “for use in several embodiments,” not all
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`embodiments, as Patent Owner argues. Id. at 14:4041, 15:1017 (emphasis
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`added). Moreover, that portion of the specification does not describe the invention
`
`as a fixed lower mount block. Indeed, Patent Owner’s characterization of the
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`“fixed” lower mount block may stretch the specification too far, as it may be
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`IPR2013-00274
`Patent 7,990,018 B2
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`inferred by the use of the word “fixed,” shrouded in quotation marks, that its use in
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`that passage is not to be taken literally.6
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`In our Decision on Institution, we noted that the specification does not
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`define the term “mounting block,” and that nothing in the claim language indicates
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`that the term is used other than in accordance with its plain and ordinary meaning.
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`Dec. 8. Guided by evidence of the plain and ordinary meaning consistent with the
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`specification, we determined that the word “block” means “a base, platform or
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`supporting frame.”7 Id. at 8. Patent Owner, however, objects to the word “base”
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`as defining the “mounting block” because the claims recite another base, the
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`“stationary base.” PO Resp. 11–13. Accordingly, to avoid confusion, Patent
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`Owner proffers that the construction of “mounting block” should refer to a block,
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`not a base. Id.
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`Petitioner argues that the proposal to define “mounting block” to mean a
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`block does not clarify any issues and that Patent Owner has not argued that the
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`prior art does not disclose a “block.” Pet. Reply 2–4. Consequently, the
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`clarification is unnecessary. Id. We agree with Petitioner. Although the claims
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`recite a “base” and a “block” distinctly, the claims, however, may recite these two
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`terms in a synonymous ordinary meaning, to indicate that the two distinct
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`structures have similar functions, as bases.
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`Therefore, we construe the term “mounting block” according to the ordinary
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`meaning of the term to mean “a base for affixing to another structure.”
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`6 See, e.g., Chicago Manual of Style, 15th edition, Section 7.62 (“When a word or
`term is not used functionally but is referred to as the word or term itself, it is either
`italicized or enclosed in quotation marks.”).
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`7 Block Definition (4), WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
`UNABRIDGED (1993) (Ex. 3001).
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`2. “removably mounting”
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`Claims 1, 12, and 17 recite the term “removably mounting.” Patent Owner
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`argues that our construction does not reflect the meaning the phrase would have to
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`one skilled in the art at the time of the invention. PO Resp. 14. Specifically,
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`Patent Owner proffers the Keim Declaration, various references, and the stated
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`problems in the Background of the Invention to argue that the term “removable”
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`means without requiring removal of attachment hardware like nuts and bolts. Id. at
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`1415 (citing Ex. 2019 ¶¶ 8384, Ex. 1001, 2:8–19). We are not persuaded by
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`Patent Owner’s argument and evidence.
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`First, the specification of the ’018 patent does not support Patent Owner’s
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`contention that not removing hardware attachments results from the desire to
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`provide safe, easy removal and replacement of the brush assembly while the
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`machine is running. The embodiments in the ’018 patent describing the removal of
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`the brush relate to the safety aspects of discontinuing the current when the device
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`is in the disengaged position. See Ex. 1001, 10:4763, 11:58. These
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`embodiments do not describe, or even imply, in any way, that “removably
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`mounting” is accomplished because one can avoid the removal of nuts and bolts
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`when disengaging the brush. Although the Summary section of the specification
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`describes “readily” removing from service a brush “without removing attachment
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`hardware such as nuts or bolts,” that description applies to “[s]ome example
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`embodiments.” Id. at 2:2325. That Summary also describes other reasons for
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`ease of removal of the brush, for example, because the device is a “contained
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`system” that is “easier to deal with and control during removal.” Id. at 2:2834.
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`Also instructive is the description of it “be[ing] useful to easily or reversibly
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`disengage a brush from a commutator to determine the extent of wear and perform
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`repairs.” Id. at 17:4244.
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`Accordingly, the specification of the ’018 patent describes various ways to
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`accomplish safety and ease of removal, but does not require that such removal be
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`accomplished without removal of attachment hardware. Patent Owner’s arguments
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`focus on exemplary embodiments, which we are careful not to incorporate into the
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`claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (warning
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`“against confining the claims to those embodiments.”). Furthermore, we note that
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`the specification describes attachment of a “removal tool” for “disengagement
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`manipulation.” See Ex. 1001, Fig. 9, 11:49–53, 12:1223 (emphasis added). The
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`removal tool engages a retractable catch pin into a pin seat in the beam of the
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`device and by pulling a release tab with the thumb, the catch pin disengages,
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`thereby attaching and removing a catch pin into the device in order to remove the
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`brush holder. See id. at 12:1223. The embodiments of the removal tool further
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`confirm that the ’018 patent does not contemplate the exclusion of all hardware
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`attachments from the removal process and that by describing how the insertion and
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`release of a pin is used in removing the brush holder, the specification does not
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`exclude using similarly functioning structures, such as nuts.
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`Second, with regard to the extrinsic evidence allegedly showing evidence
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`that the term “removably mounting” would have the meaning proffered by Patent
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`Owner, we are not persuaded by that evidence. First, the Keim Declaration, in the
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`passages cited, attempts to support Patent Owner’s construction by referring to the
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`benefit of using one versus two hands when removing a brush. Ex. 2019 ¶ 83. The
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`specification, however, does not mention, or even imply, that the objective of the
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`safe removal is to avoid using two hands. Second, the remaining passages of the
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`Keim Declaration do not persuade us that the term “removable” had the meaning
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`Patent Owner argues. For example, the argument that in 1976 an article referred to
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`a brush holder as “removable with an insulated handle” does not support the
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`contention that the word “removable” means without having to remove attachment
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`hardware such as nuts and bolts. See Ex. 2019 ¶¶ 8385 (relying on references that
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`use the word “removable” in connection with brush holders). Patent Owner has
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`not shown that the articles relied on address the claim term “removably mounting,”
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`much less that the word “removable” somehow is unique to the situation where a
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`brush holder is mounted in such a manner that it can be removed without removing
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`attachment hardware. The more reasonable interpretation of those articles is that
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`the word “removable” is used in the plain and ordinary sense of the word as known
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`to laypersons, and not the special circumstances alleged by Patent Owner. Absent
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`a special definition set forth in the specification and given the evidence of the
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`broadest reasonable interpretation of the term, we are not persuaded that
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`“removably mounting” has a different meaning to those of ordinary skill in the art.
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`See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003)
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`(determining that, where no explicit definition for the term “electronic multi-
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`function card” was given in the specification, this term should be given its ordinary
`
`meaning and broadest reasonable interpretation; the term should not be limited to
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`the industry standard definition of credit card where there is no suggestion that this
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`definition applies to the electronic multi-function card as claimed, and should not
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`be limited to preferred embodiments in the specification).
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`As stated in our Decision on Institution, the claim language and the
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`specification are evidence of the plain and ordinary meaning. In the claim
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`language, the specific structures associated with the function of “removably
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`mounting” include a brush holder component “for removably mounting to the
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`IPR2013-00274
`Patent 7,990,018 B2
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`mounting block.” Claim 1 further recites the brush holder component’s
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`relationship with the “mounting block”; it recites that the brush holder component
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`comprises a “channel for receiving a portion of the mounting block therein.” The
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`specification describes several embodiments describing the interaction between the
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`beam (described as having a “channel-like structure”) and the mounting block,
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`such as the “engaged” position, the “disengaged” position, and intermediate stages.
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`See Ex. 1001, 4:2730, see also 14:721, Figs. 13A13C (illustrating a disengaged
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`position of beam 132 having a pivot point “X” coupled with lower mount 130
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`through the groove there shown). Furthermore, “[i]n several embodiments, the
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`beam 14 may be completely removed/separated from the lower mount block 16.”
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`Id. at 4:4143. These positions and the described removal of beam 14 are
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`consistent with the removability of the beam with respect to the lower mount
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`block. That is, the beam is mounted on the mounting block in a manner that is not
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`permanent so it can be removed as needed.
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`Based on the foregoing, we conclude that the construction proffered by
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`Petitioner is consistent with the plain and ordinary meaning of the term
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`“removably mounting”: “mounting in a manner that is not permanent.”
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`B. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was made to
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`a person having ordinary skill in the art to which said subject matter pertains. KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations including: (1) the scope
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`and content of the prior art; (2) any differences between the claimed subject matter
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`and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
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`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In that regard, an obviousness analysis “need not seek out precise teachings
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`directed to the specific subject matter of the challenged claim, for a court can take
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`account of the inferences and creative steps that a person of ordinary skill in the art
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`would employ.” KSR, 550 U.S. at 418; see also In re Translogic Tech., Inc., 504
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`F.3d 1249, 1259 (Fed. Cir. 2007). “If a person of ordinary skill in the art can
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`implement a predictable variation, and would see the benefit of doing so, § 103
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`likely bars its patentability.” KSR, 550 U.S. at 401. “A court must ask whether the
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`improvement is more than the predictable use of prior art elements according to
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`their established functions.” Id. After KSR, the Federal Circuit has recognized that
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`obviousness is not subject to a “rigid formula,” and that “common sense of those
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`skilled in the art demonstrates why some combinations would have been obvious
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`where others would not.” Leapfrog Enters. v. Fisher–Price, Inc., 485 F.3d 1157,
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`1161 (Fed. Cir. 2007).
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`KSR expanded the sources of information for a properly flexible
`obviousness inquiry to include market forces; design incentives; the
`“interrelated teachings of multiple patents”; “any need or problem
`known in the field of endeavor at the time of invention and addressed
`by the patent”; and the background knowledge, creativity, and common
`sense of the person of ordinary skill.
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`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
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`(quoting KSR, 550 U.S. at 418–21).
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`The level of ordinary skill in the art is reflected by the prior art of record.
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`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
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`57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`We analyze the asserted grounds of unpatentability in accordance with the
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`above-stated principles.
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`C. Obviousness over Bissett, Kartman, and Ohmstedt
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`In view of the instructions from the Federal Circuit on remand, we follow
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`the guidelines for agency review set forth in In re Sang-Su Lee. Cutsforth, 636 F.
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`App’x at 579 (citing Sang-Su Lee, 277 F.3d 1338). Specifically, we note the
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`requirement that the agency “provide an administrative record showing the
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`evidence on which the findings are based, accompanied by the agency’s reasoning
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`in reaching its conclusions.” Sang-Su Lee, 277 F.3d at 1342 (citing In re Zurko,
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`258 F.3d 1379, 1386 (Fed. Cir. 2001); In re Gartside, 203 F.3d 1305, 1314 (Fed.
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`Cir. 2000)).
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`Petitioner argues that claims 1–24 would have been obvious over Bissett,
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`Kartman, and Ohmstedt. Pet. 8–27; Pet. Reply 5–15. Patent Owner disputes
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`Petitioner’s position, arguing the proposed combination fails to render the
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`challenged claims obvious. Prelim. Resp. 19–27; PO Resp. 18–50. We have
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`reviewed the Petition, Patent Owner’s Response, Petitioner’s Reply, the additional
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`briefing filed after the Federal Circuit’s decision in Cutsforth, as well as the
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`relevant evidence discussed in those papers and other record papers. As described
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`in further detail below, we determine that the record supports Petitioner’s
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`contentions for claims 1–4, 6–7, and 9–24, challenged as obvious over Bissett,
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`Kartman, and Ohmstedt, and we adopt Petitioner’s contentions discussed below as
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`our own. For reasons that follow, we determine that Petitioner has shown by a
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`preponderance of the evidence that claims 1–4, 6–7, and 9–24 would have been
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`obvious over Bissett, Kartman, and Ohmstedt. Furthermore, we determine that
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`Petitioner has failed to establish by a preponderance of the evidence that claims 5
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`and 8 are unpatentable.
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`1.
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`Overview of Bissett (Ex. 1005)
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`Bissett relates to a brush assembly for a dynamoelectric machine. Ex. 1005,
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`1:910. The Bissett brush assembly is removable so that the brush can be replaced
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`while the machine is running. Id. at 1:1013. Figure 1 of Bissett is reproduced
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`below.
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`
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`Figure 1 shows the general arrangement of a brush mounted in relation to the
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`machine. Id. at 1:41–43. Brush 24 and spring 26, as shown in Figure 1, are
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`disposed on a brush support backplate 10 around brush frame 4 such that brush 24
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`contacts the surface of the rotating collector ring 2. Id. at 1:5157, 2:5–8.
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`Removable handle 14 operates to detach the brush assembly from brush frame 4 to
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`allow removal of worn generator brush 24. Id. at 2:4462.
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`Illustrating the removed brush assembly 12 is Figure 4 of Bissett,
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`reproduced below.
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`
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`Figure 4 depicts brush assembly 12 disconnected from backplate 10 and removable
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`handle 14 disconnected from brush assembly 12. Id. at 2:6367. Brush assembly
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`12 comprises L-shaped member 20 configured as an elongated side that slides into
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`a securely held position relative to dovetails 18. Id. at 1:6872. L-shaped member
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`20 further comprises brush holder 22 configured as a hollow rectangular structure
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`that accommodates brush 24. Id. at 2:15.
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`2.
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`Overview of Ohmstedt (Ex. 1003)
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`Ohmstedt discloses a brush mounting device that allows “brush maintenance
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`[to] occur while the machine is under load and voltage is applied to the brushes.”
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`Ex. 1003, 2:6466. Figure 1 of Ohmstedt is reproduced below.
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`As shown above in Figure 1, Ohmstedt discloses a brush mounting device
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`that includes brush holder 11 having brush 27 and brush box 13 attached to bus
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`ring 15. Ex. 1003, 2:57. Ohmstedt discloses that brush box 13 is fixed to bus
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`ring 15, while brush holder 11 and brush 27 are removable from brush box 13 and
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`the dynamoelectric machine. Id. at 2:5962. Furthermore, Ohmstedt discloses that
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`brush holder 11 provides divergent portions 23 that can engage, slidably, ramps 59
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`to cause the brush holder to release the brush, which “floats” in the rectangular
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`portion of the brush box and is in contac