Paper 35
`Date: June 27, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-00958
`Patent 8,585,136 B2
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, 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
`Petitioner, J Squared, Inc. d/b/a University Loft Company
`(“J Squared”), filed a Petition (Paper 1, “Pet.”) requesting institution of an
`inter partes review of claims 1, 2, and 4‒14 of U.S. Patent No. 8,585,136 B2
`(“the ’136 patent,” Ex. 1001). Patent Owner, Sauder Manufacturing
`Company (“Sauder”), filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We instituted an inter partes review based on the grounds that claims
`1, 2, 4, 5, 8, 9, and 11 are unpatentable under 35 U.S.C. § 103(a) as
`unpatentable over Yu1 and Clark2 and claims 6, 7, 10, and 12‒14 are
`unpatentable under 35 U.S.C. § 103 as obvious over and Yu, Clark, and
`Kassai3. Paper 7 (“Decision” or “Dec.”). Sauder subsequently filed a Patent
`Owner Response (Paper 13, “PO Resp.”), to which J Squared replied (Paper
`21, “Pet. Reply”). An oral hearing was conducted on April 21, 2016, and a
`transcript of that hearing has been entered into the record (Paper 34, “Tr.”).
`For the reasons explained below, and on the record now before us, we
`determine the following: (1) J Squared has shown by a preponderance of the
`evidence that claims 1, 2, 8, 9, and 11 are unpatentable as obvious of Yu and
`Clark; (2) J Squared has not shown by a preponderance of the evidence that
`claims 4 and 5 are unpatentable as obvious of Yu and Clark; (3) J Squared
`has not shown by a preponderance of the evidence that claims 6, 7, 10, and
`12‒14 are unpatentable as obvious over Yu, Clark, and Kassai.
`
`
`1 U.S. Patent No. 6,554,353 B1 issued to Yu (Apr. 29, 2003) (Ex. 1002).
`2 U.S. Patent No. 4,285,543 issued to Clark (Aug. 25, 1981) (Ex. 1004).
`3 U.S. Patent No. 4,723,813 issued to Kassai (Feb. 9, 1988) (Ex. 1005).
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`B. Related Matters
`Sauder has sued J Squared for infringing the ’136 patent in Sauder
`Manufacturing Company v. J Squared, Inc. d/b/a University Loft Company,
`Case No. 3:14-cv-00962-JZ, pending in the United States District Court for
`the Northern District of Ohio (“the infringement litigation”). Pet. 2. The
`district court issued a Markman Order in the infringement litigation on June
`9, 2015. Ex. 2001.
`J Squared also challenged claims 1‒14 of the ’136 patent in a petition
`for inter partes review filed on February 19, 2015. J Squared, Inc. v. Sauder
`Mfg. Co., Case IPR2015-00774 (“the related petition”). We instituted inter
`partes review of claims 1, 2, and 4‒14 in the related petition and
`consolidated the proceedings solely for the purpose of conducting an oral
`hearing. We issue concurrently with this decision a separate Final Written
`Decision in the related proceeding.
`U.S. Patent Application No. 14/596,623, filed January 14, 2015, now
`U.S. Patent No. 9,370,249, issued June 21, 2016, is a continuation of U.S.
`Patent Application No. 14/057,781 (’781 application), filed October 18,
`2013, now U.S. Patent No. 8,960,787 B2 (’787 patent), which is a
`continuation of U.S. Patent Application No. 13/277,778, filed October 20,
`2011, now the ’136 patent, which Petitioner challenges in the present matter.
`J Squared also challenged claims 1‒21 of the ’787 patent in a petition for
`inter partes review filed on December 29, 2015. J Squared, Inc. v. Sauder
`Mfg. Co., Case IPR2016-00413 (“the ’413 IPR”). Sauder filed a Patent
`Owner Preliminary Response, and the Board issued a decision in the ’413
`IPR denying institution on June 9, 2016.
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`C. The ’136 Patent
`The ’136 patent is directed to “a chair with a coupling companion
`stool base.” Ex. 1001, 1:49. “The chair portion has a frame that may be
`supported above a generally horizontal surface by the base, which base
`releasably couples with the frame.” Id. at 1:58‒60. The ’136 describes:
`When the frame is decoupled from the base, the frame forming
`the chair portion is adapted for use as casual floor rocker seating,
`and the base is adapted to provide a companion stool upon which
`a user may sit or, alternatively a side table which may be
`positioned adjacent to the chair portion.
`
`Id. at 2:17‒22.
`Figures 1 and 18 depict chair portion 100 and base portion 300 in
`coupled and uncoupled configurations, respectively. Id. at 4:21‒23.
`Figures 1 and 18 are reproduced below.
`
`
`
`Figure 1 depicts a perspective view of a chair coupled to a companion stool
`base in a task chair configuration. Figure 18 depicts a perspective view of
`an uncoupled chair and companion stool base in a nested configuration.
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`As depicted in Figures 1 and 18, chair portion 100 includes frame 102,
`which has upper portion 104 and lower portion 106. Id. at 4:24‒26. Legs
`180 extend generally downward from lower portion 106 and are configured
`as rockers, so as to render the chair portion capable of use as a floor rocker
`when the chair is set upon a generally horizontal supporting surface. Id. at
`6:36‒39, 6:45‒46. Upper portion 104 provides a back rest and lower portion
`106 includes a sitting portion. Id. at 4:33, 4:61‒62. Base portion 300 has
`saddle 310, which is connected via post 334 to five legs 330. Id. at 7:20‒28.
`Figures 11 and 12 depict coupling of chair portion 100 and base
`portion 300. Figures 11 and 12 are reproduced below.
`
`
`Figures 11 and 12 depict side elevation views showing coupling and
`uncoupling of chair portion and companion stool base portion, with a portion
`chair portion and stool base portion in cross section.
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`As depicted in Figures 11 and 12, lower portion 106 includes claw
`142 and clip clamp latch 160. Id. at 4:64‒67. Claw 142 and clip clamp latch
`160 function to engage releasably with saddle 310 of base 300. Id. at 5:24‒
`26, 5:60‒62. Claw 142 is a fixed member, and latch 160 is connected
`hingedly so as to be movable. Id. at 5:62‒67. Lower portion 106 also
`includes receptacle 190 (not visible in the figures reproduced above) that has
`a generally trapezoidal geometry which corresponds with saddle 310 for
`unitary keying alignment of chair portion 100 with base portion 300. Id. at
`6:63‒7:5. In use, chair portion 100 and base portion 300 may be separate,
`with chair portion 100 providing casual rocker seating to a user, and base
`portion 300 engaged by the user or another user as a work surface, a writing
`surface, or a sitting surface. Id. at 8:12‒19.
`D. Illustrative Claim
`Claims 1 and 12 are independent. Claim 1 is illustrative and is
`reproduced below.
`1.
`A combination of a chair and a stool base portion, said
`chair comprising:
`an upper portion providing a backrest for support for a first
`
`user;
`
`a lower portion connected to said upper portion and having
`a sitting portion for supporting said first user in a seated position;
`said stool base portion adapted to support said chair, and
`comprising a saddle adapted to releasably engage said chair;
`said combination is configurable in a first configuration
`with said chair being coupled to said saddle, and said sitting
`portion being positioned above said saddle;
`said combination is manually convertible between said
`first configuration and a second configuration, where said second
`configuration comprises said chair still functioning as a chair for
`said first user, and said stool functioning so that said saddle is
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`accessible to said first user as a work surface or, alternatively, so
`that said saddle is accessible to a second user as a sitting surface;
`and
`
`further comprises an assembly
`said combination
`positioned below said sitting portion and forming at least a pair
`of base legs which are structured so as to function as rockers for
`said chair when said combination is in said second configuration.
`Ex. 1001, 10:22‒46.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`The Board interprets the claims of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent in
`which they appear[].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs,
`LLC v. Lee, No. 15-446, __ S. Ct. __, 2016 WL 3369425, at *12 (U.S. June
`20, 2016) (upholding the use of the broadest reasonable interpretation
`standard). Claim terms also 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). Any special definition for a claim term must be set forth in
`the specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In the Petition, J Squared proposed constructions for “coupled,”
`“engage,” “assembly,” “positioned below,” “function as rockers,” “latch
`moving between closed and open positions,” “a pedestal that . . . includes a
`connector,” and “means for releasably engaging said chair to said base
`portion.” Pet. 9–15. Sauder contested several of J Squared’s proposed
`constructions for these claim terms and additionally proposed its own
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`construction for “combination of a chair and a stool base portion.” Prelim.
`Resp. 5‒16. In the Decision instituting trial, we preliminarily construed
`“assembly,” “positioned below,” “structured so as to function as rockers,”
`and “means for releasably engaging said chair to said base portion.” Dec. 9‒
`16. In doing so, we considered constructions of “assembly” and “rockers”
`that were issued by the district court in a Markman Order issued in the
`corresponding district court litigation involving the ’136 patent. Ex. 2001.
`In its Patent Owner Response, Sauder proffered constructions of the
`terms “combination,” “user,” “stool base,” “saddle,” “assembly,” “or,
`alternatively,” “generally arcuately downward from,” “pedestal,” and
`“manually operable means for releasably engaging said chair to said base
`portion.” PO Resp. 14‒23. In its Petitioner Reply, J Squared contested
`many of Sauder’s proposed constructions for these claim terms. Pet.
`Reply 5‒11. Many of these claim terms were argued to distinguish over the
`prior art addressed in the related ’774 IPR. To the extent that we do not
`discuss a claim term explicitly here, we adopt the claim interpretation as set
`forth in the final written decision of the ’774 IPR.
`For purposes of reaching our determination as to the patentability of
`the instituted claims over the prior art, we provide a final construction of the
`following claim language.
`1. “combination”
`The preamble of claim 1 recites “A combination of a chair and a stool
`base portion, said chair comprising: . . . .” Ex. 1001, 10:22‒23. The body of
`the claim recites elements of the chair and stool base, and also calls for the
`combination to further comprise an assembly. Id. at 10:24‒46.
`Sauder argues that the claim is limited to the combination of only a
`chair and a stool base portion as the two units that make up the claimed
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`“combination.” PO Resp. 15‒16 (noting that the preamble does not use the
`open-ended term “comprising” immediately after the word “combination”).
`Sauder is, in essence, seeking to have the Board rewrite the claim to
`recite, “A combination consisting of a chair and a stool base portion.” We
`see no reason to narrow the claim, particularly when the body of the claim
`itself recites “said combination further comprises an assembly . . . .” Ex.
`1001, 10:42. For these reasons, we construe “combination” to include, but
`not be limited to, a chair and a stool base portion.
`2. “assembly” and “positioned below”
`Claim 1 recites “said combination further comprises an assembly
`positioned below said sitting portion and forming at least a pair of base legs
`which are structured so as to function as rockers for said chair when said
`combination is in said second configuration.” Ex. 1001, 10:42‒46.
`As we noted in our Decision on Institution:
`Patent Owner further notes that the district court construed
`“assembly” to mean a structural unit that includes the rockers.
`Id.; see also Ex. 2001, 3 (adopting the definition of “assembly”
`as a “[s]tructural unit positioned below [a] seat to support [the]
`seat and provide rockers”). The district court further noted that
`the assembly shown in Figure 17 is a “single molded plastic
`assembly” and declined
`to adopt Petitioner’s proffered
`construction of “assembly” as being “[a] collection of
`manufactured parts fitted together, distinct from the lower
`portion and its sitting portion, and from the upper portion.” Ex.
`2001, 3.
`Dec. 9‒10.
`We interpreted “assembly” in our Decision on Institution as follows:
`The ’136 patent does not use the term “assembly” in
`describing the combination chair and stool base portion. The
`’136 patent describes an exemplary embodiment in which chair
`portion 100 is formed with frame 102, which has upper portion
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`104 and lower portion 106. Ex. 1001, 4:21‒26. Upper portion
`104 provides a back rest and lower portion 106 includes a sitting
`portion and two frame legs 180. Id. at 4:33, 4:61‒5:3. Legs 180
`appear to be an integrally formed part of frame 102 in the
`exemplary embodiment. Id. at Fig. 17.
`The language of claim 1, however, simply calls for the
`assembly to be “positioned below” said sitting portion, where
`said sitting portion is defined to be part of the lower portion of
`the chair. The claim language does not call for the assembly to
`be integrally formed as part of the lower portion. Further, the
`ordinary meaning of the term “assembly” implies a chair formed
`from multiple parts. Ex. 3001. The breadth of the claim
`language is such that any means of attaching/incorporating the
`base legs so that they are positioned below the sitting portion of
`the chair and so that the legs function as rockers for the chair
`when the chair is in the second configuration, would be
`encompassed by the language of the claim.
`Id. at 10 (footnote omitted). Based on these findings, we determined that,
`under the broadest reasonable interpretation of the claim language,
`“assembly” encompasses “both base legs formed integrally with the lower
`portion and base legs otherwise incorporated into or attached to so that they
`are positioned below the sitting portion of the chair.” Id. at 11.
`We also interpreted “positioned below” in our Decision on Institution
`as follows:
`We do not feel constrained under the broadest reasonable
`interpretation to confine the claim language to only the specific
`exemplary embodiment described in the Specification. Rather,
`under the broadest reasonable interpretation of the term “below,”
`the claim language requires only that at least a portion of the base
`legs are lower than the sitting portion of the chair such that when
`the chair is set upon a supporting surface such as the ground, the
`chair rests on the base legs, as opposed to the sitting portion, such
`that the base legs can function as rockers, as called for [in] the
`claim. As such, we interpret “positioned below” to call for at
`least a portion of the base legs to be lower than the lowest portion
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`of the sitting portion of the chair, such that when the chair is in
`the second configuration, the base legs can function as rockers
`for the chair.
`Id. at 12.
`Sauder asserts that “[r]easonably construed, the ‘assembly’ must be
`below the seat, engaging the saddle when coupled, and have integral rocker
`legs wide enough apart to accept the saddle but still more or less within a
`vertical projection of the seat surface lateral edges to fit into the kneehole of
`a desk.” PO Resp. 19. The portions of the ’136 patent cited by Sauder as
`support for this definition seek to have us improperly import limitations
`from the preferred embodiment into the claim. For example, Sauder cites to
`the description provided in column 6, lines 35‒62 of the ’136 patent as
`support for its assertion that the claim must be read to encompass only
`instances in which the rockers are formed integrally with the base legs. PO
`Resp. 18. The written description does not support Sauder’s proffered
`interpretation. Rather, the patent describes that “[t]he legs 180 may have
`various configurations” and that “the legs 180 are desirably configured as
`rockers” and that “the legs 180 are preferably artfully incorporated into the
`chair frame 102 and extend to stops 182 at a very back of the frame lower
`portion 106.” Ex. 1001, 6:39‒40, 45‒46, 50‒52 (emphasis added). We see
`no reason presented in Sauder’s Patent Owner Response to deviate from the
`interpretations of “assembly” and “positioned below” presented in our
`Decision on Institution and recited supra.
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`3. “two base legs”
`Claim 4 depends from claim 24 and further recites:
`wherein a first of the two base legs extends generally arcuately
`downward from a lower portion left side and second portion, and
`from the lower portion left side and first portion, and a second of
`the two base legs extends generally arcuately downward from a
`frame lower portion right side and second portion, and from the
`frame lower portion right side and first portion, with the base legs
`defining the rockers.
`Ex. 1001, 10:62‒11:3.
`Sauder argues that this claim language requires that the base legs,
`which are structured to function as rockers, themselves extend “generally
`arcuately downward” from forward and rearward points under the seat. PO
`Resp. 20 (arguing that the claim is not met by merely edge surfaces
`extending arcuately downward) (citing Ex. 1001, 6:45‒54, Ex. 2039, 7:18,
`Ex. 2072, 43‒45).
`The plain language of claim 4 recites that the base legs extend
`generally arcuately downward “from” the recited sides and portions of the
`lower portion of the chair. An ordinary meaning of “from” is “used as a
`function word to indicate a starting point of a physical movement or a
`starting point in measuring or reckoning or in a statement of limits.”5 Based
`on this definition, the plain language of claim 4 recites the arcuate
`downward extension of the base legs start at the recited sides and portions on
`the lower portion of the chair. This understanding of the claim language is
`
`4 Claim 2 depends from independent claim 1 and further recites, “said lower
`portion comprises a first portion near said upper portion, and a second
`portion spaced away from said first portion; and said base portion extends
`generally upward to said saddle.” Ex. 1001, 10:47‒52.
`5 Ex. 3002 (full definition from www.merriam-webster.com/dictionary/
`from) (definition 1(a)).
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`consistent with the description of the preferred embodiment provided in the
`’136 patent. Ex. 1001, 6:47‒54, Figs. 17‒19 (describing and depicting the
`legs 180 extending generally arcuately downward from second portion 124
`to first portion 122 along the left and right side of the chair, and extending to
`stops 182 at the very back of frame lower portion 106).
`B. Obviousness
`Section 103 forbids issuance of a claim when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art.” 35 U.S.C.
`§ 103.6
`The ultimate determination of obviousness under § 103 is a question
`of law based on underlying factual findings. In re Baxter Int’l, Inc., 678
`F.3d 1357, 1361 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966)). These underlying factual considerations consist of:
`(1) the “level of ordinary skill in the pertinent art,” (2) the “scope and
`content of the prior art,” (3) the “differences between the prior art and the
`claims at issue,” and (4) “secondary considerations” of non-obviousness
`such as “commercial success, long-felt but unsolved needs, failure of others,
`etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
`Graham v John Deere Co. of Kansas City, 338 U.S. 1, 17–18 (1966)). A
`claimed invention may be obvious even when the prior art does not teach
`
`
`6 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), took effect on March 16, 2013, and amended 35 U.S.C.
`§ 103. Because the ’136 patent has an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. § 103.
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`each claim limitation, so long as the record contains some reason why one of
`skill in the art would modify the prior art to obtain the claimed invention.
`See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307 (Fed. Cir. 2006).
`J Squared must prove unpatentability by a preponderance of the
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Against this
`background, we review J Squared’s contention that claims 1, 2, and 4–14 of
`the ’136 patent are unpatentable.
`1. Level of Ordinary Skill in the Art
`In determining the level of skill in the art, various factors may be
`considered, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
`(Fed. Cir. 1986)). The court in GPAC held that the Board did not err in in
`failing to make a specific finding as to the level of skill in the art and relying
`instead on the references of record to inform it as to the level of skill in the
`art. Id.; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (holding that the absence of specific findings on the level of skill in
`the art does not give rise to reversible error where the prior art itself reflects
`an appropriate level and a need for testimony is not shown).
`J Squared did not proffer a specific level of skill of one of ordinary
`skill in the art, and relied instead on the prior art to reflect an appropriate
`level of skill. Tr. 78:15‒20. We find no need for testimony as to the level of
`skill in the art, as it is demonstrated aptly by the prior art of record. For
`purpose of this Final Written Decision, we resort to the prior art of record to
`assess the level of skill of one of ordinary skill in the art. In particular, as
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`discussed below, the prior art provides the suggestion itself for the
`modification of Yu’s deck chair with the rocker attachment of Clark.
`2. Scope and Content of the Prior Art
`i. Yu
`Yu discloses a dual-purpose chair that serves as an office chair when
`seat structure 10 and base structure 20 are fastened together, and serves as a
`deck chair when the structures 10, 20 are unfastened. Ex. 1002, 2:22‒27.
`Figures 1 and 2 of Yu are reproduced below.
`
`
`
`Figure 1 shows a perspective view of the chair being used as an office chair.
`Figure 2 shows an exploded view of the chair of Figure 1.
`Yu discloses seat structure 10 formed of seat 11, backrest 12, and
`backrest support frame 13. Ex. 1002, 1:59‒60. Two inverted U-shaped
`support rods 112 are provided on the underside of seat 11. Id. at 1:60‒61.
`Seat structure 10 also includes two longitudinal side rods 114. Id. at 2:4.
`Yu’s backrest 12 is provided with two long side rods 123, which are
`connected with each other at the top end and provided at the bottom end
`with support portion 125. Id. at 1:63‒67. Backrest support frame 13 has
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`crown portion 134 located under one longitudinal end of seat 11. Id. at 2:4‒
`6.
`
`
`
`Base structure 20 is formed of upright rod 21, caster seat arms 22,
`support plate 23 mounted on the top end of upright rod 21, and cover plate
`40. Id. at 2:7‒12. Base structure 20 is fastened with support rods 112 of
`seat 11 by fastening bolts 25. Id. at 2:19‒21.
`Figure 5 is reproduced below.
`
`
`Figure 5 shows the seat structure in use as a deck chair.
`As shown in Figure 5, when seat structure 10 is used as a deck chair,
`two support portions 125 and crown portion 134 rest on the floor surface.
`Id. at 2:26‒31. Also, the forward ends of each longitudinal side rail 114 rest
`on the floor surface. Id. at Fig. 5. Two side rods 123 of backrest 12 are
`pivotally fastened with longitudinal side rods 114 of seat 11 such that the
`backrest 12 can be swiveled in relation to seat 11, to fold the chair. Id. at
`2:32‒48, Figs. 4, 6.
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`ii. Clark
`Clark discloses a rocker assembly for attachment to a stationary
`folding lawn chair. Ex. 1004, 1:6‒10. Figure 1 of Clark is reproduced
`below.
`
`
`
`
`Figure 1 is an exploded perspective view of a folding lawn chair and a
`rocker attachment.
`As shown in Figure 1 above, rocker attachment 12 includes a pair of
`rocker elements 30, 32, that are bowed into an arcuate configuration.
`Ex. 1004, 4:11‒15. Rocker members 30, 32 are in spaced parallel
`relationship with each other and are transversely connected by front and rear
`beam means 38, 40. Id. at 4:17‒22. Spring clips 48, 49 are mounted on the
`upwardly facing surface of beams 38, 40. Id. at 4:41‒47.
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`IPR2015-00958
`Patent 8,585,136 B2
`iii. Kassai
`Kassai discloses high chair 10 having seat member 12, table support
`frames 14, 15, and 16, and table 17 disposed on the table support frames.
`Ex. 1005, 2:55‒3:5, Fig. 1. Figure 1 of Kassai is reproduced below.
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`Figure 1 is a perspective view of a high chair with a table joined to the chair
`via operating levers.
`On opposite sides of table 17 are operating levers 18 and 19, which
`are movable between first and second positions. Id. at 3:10‒14, Fig. 1.
`Levers 18 and 19 include engaging projections 25 to embrace corresponding
`engaging recesses 26 on the table support frames so as to firmly fix table 17
`in position. Id. at 3:37‒42, 3:60‒63, Figs. 1, 3.
`3. Differences between the Prior Art and the Claims at Issue
`i. Claim 1 (Yu and Clark)
`On the present record and based upon the claim interpretation
`discussed supra, we find that Yu comprises a combination of a chair (Yu’s
`seat structure 10) and a stool base portion (Yu’s base structure 20). Pet. 24
`(citing Ex. 1002, Figs. 2, 3). Yu’s chair 10 has an upper portion providing a
`backrest 12 for supporting a first user, and a lower portion connected to the
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`Patent 8,585,136 B2
`upper portion and having a sitting portion 11 for supporting the first user in a
`seated position. Id.; see also Ex. 1002, 1:59‒60, 2:22‒27. The stool base
`portion 20 is adapted to support the chair 10 and comprises a saddle (plates
`23, 40) adapted, via bolt holes, to releasably engage the chair. Pet. 25; see
`also Ex. 1002, 2:7‒12, 19‒21.7
`Yu’s combination of the chair and stool base portion is configurable
`in a first configuration, as shown in Figures 1 and 3, with the chair being
`coupled to the saddle and the sitting portion positioned above the saddle. Id.
`at 25. The combination is configurable to a second configuration, as shown
`in Figure 2, in which the chair functions as a chair for a first user, and the
`stool functions so that the saddle is accessible to a second user as a sitting
`surface. Id. Although Yu does not disclose explicitly secondary uses for its
`pedestal base 20, we find that Yu’s base does not differ structurally from the
`claimed stool base portion, in that the top surface of Yu’s saddle (plate 40) is
`accessible to a second user as a sitting surface and is accessible to the first
`user as a work surface. Specifically, the top surface of Yu’s base 20 is flat
`and thus could be used to rest items upon it for use as a work surface. Also,
`Yu’s base 20 is capable of holding chair 10 atop it and to support a user
`seated in chair 10, and thus Yu’s base 20 is also capable of supporting a user
`seated directly atop the upper surface of base 20. As such, the top surface of
`Yu’s base 20 is capable of being used as a sitting surface.
`
`
`7 Although Sauder proposes interpretations for “stool base portion” and
`“saddle” (PO Resp. 17‒18), Sauder does not appear to argue that Yu lacks
`these features (PO Resp. 24‒28). We find that even if we were to adopt
`Sauder’s proposed constructions, Yu’s base constitutes a “stool base
`portion” and comprises a “saddle” as claimed.
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`Yu’s chair 10 further comprises an assembly, including crown portion
`134, side rods 114, and support portions 125, which form base legs for the
`chair when the combination is in the second configuration. Ex. 1002, 2:26‒
`31, Fig. 5. Yu does not disclose that the base legs are structured to function
`as rockers.
`We also find that Clark discloses a clip-on rocker attachment 12
`designed for a folding chair 10. Pet. 25; see also Ex. 1004, 3:67‒4:3, Fig. 1.
`In particular, Clark discloses a “rocker assembly for use on folding chairs of
`the type commonly referred to as ‘lawn chairs[.]’” Ex. 1004, 1:8‒10. Clark
`provides evidence of a desire in the art to develop a simple low-cost rocker
`assembly for converting a stationary chair, such as a foldable lawn chair,
`into a rocker. Id. at 1:12‒62.
`J Squared asserts that “[i]t would have been obvious to one having
`ordinary skill in the art at the time of the invention to modify Yu to have
`rockers as taught by Clark, because Yu discloses a folding chair and Clark
`discloses a clip-on rocker attachment that is designed specifically to attach to
`a folding chair.” Pet. 25. J Squared posits that “[a] skilled person would
`obviously size and position the front clips appropriately to fit onto Yu’s
`front legs when the rear clips are on Yu’s transverse rear bar,” and that
`“[w]ith Clark’s rockers attached, Yu’s chair would have base legs that
`naturally function as rockers when the chair is on the floor.” Id. at 26.
`J Squared further notes that “[t]he clip-on rocker attachment could be
`attached indefinitely, i.e., in both the first and second configurations and
`while changing from one to the other.” Id. J Squared also contends that
`“[t]he claimed invention is merely a combination of known prior art
`elements according to known methods to yield predictable results.” Id.
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`We agree with J Squared that there is sufficient motivation found in
`the references themselves for the proposed combination of teachings from
`Yu and Clark. Both Yu and Clark are directed to folding deck chairs, and
`Clark demonstrates that it was desirable at the time of the invention to have
`a deck chair that is structured to function as a rocking chair. Further, we
`agree with J Squared that the clip-on rocker attachment of Clark could be
`attached indefinitely, i.e., in both the first and second configurations and
`while changing from the office chair configuration to the deck chair
`configuration. Sauder has not provided persuasive evidence to contradict
`this finding. We agree with J Squared’s reasoning that the modification of
`Yu with the rocker rails of Clark is merely a combination of known prior art
`elements according to known methods to yield predictable results.
`Sauder asserts that attaching Clark’s rocker attachment to the existing
`legs of Yu’s foldable deck chair after it has been detached from its pedestal
`base “would lock the legs in place and