IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYTEE PRODUCTS, INC.
`Petitioner
`
`v.
`
`JOHN FRANKLIN GEURKINK,
`Patent Owner.
`
`Patent No. 8,522,385
`For: HIGH EFFICIENCY FLOOR TREATING SYSTEM AND METHOD
`
`Inter Partes Review No.
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,522,385
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. GROUNDS FOR STANDING ........................................................................ 1
`III.
`IDENTIFICATION OF CHALLENGE .......................................................... 1
`A. Overview of the ‘385 Patent ........................................................................ 1
`1. The '385 Patent Specification ...................................................................... 2
`2. Highlights of the '385 Patent Prosecution History ...................................... 3
`B.
`Claim Construction of the Challenged Claims ............................................ 4
`1. “power source” ............................................................................................ 4
`2.
`"counterbalance" (Claims 1, 5) .................................................................... 5
`3.
`"radially" (Claim 1) ..................................................................................... 5
`4. “configured to connect […] at at least two different distances” (Claims
`1, 5) .............................................................................................................. 5
`"plug bearing" (Claim 5) .............................................................................. 7
`5.
`Level of Skill in the Art ............................................................................... 7
`C.
`Statement of Precise Relief for Each Claim Challenged ............................. 7
`D.
`1. Claims for Which Review Is Requested ...................................................... 7
`2. Citation of Prior Art ..................................................................................... 8
`3. Statutory Grounds of Challenge .................................................................. 8
`E.
`Overview of the Cited Prior Art .................................................................. 9
`1. Lancaster ...................................................................................................... 9
`2. Bangerter .................................................................................................... 11
`
`
`
`i
`
`

`
`1.
`2.
`
`3.
`4.
`
`5.
`
`3. Zaccone ...................................................................................................... 11
`4. Gerry .......................................................................................................... 12
`5. Charnitski ................................................................................................... 13
`6. Marton ........................................................................................................ 14
`IV. DETAILED EXPLANATION OF THE CHALLENGE .............................. 15
`A. Ground I: Claim 1 Is Obvious over Lancaster in View of Bangerter,
`Gerry (or Marton), and Charnitski ............................................................ 15
`"An oscillating, floor treating device comprising" .................................... 15
`"a power source having a rotatable drive shaft, wherein the rotatable
`drive shaft rotates around an axis of rotation" ........................................... 16
`"a flywheel having an aperture configured to receive the drive shaft" ..... 16
`"a counterbalance connected to and extending radially from the
`flywheel" .................................................................................................... 17
`"a floor treating attachment configured to connect to the counterbalance
`at at least two different distances from the axis of rotation of the drive
`shaft, a first distance being at least 0.400 inch from the axis of rotation
`of the drive shaft" ....................................................................................... 18
`6. Motivation to Combine Lancaster with Gerry (or Marton) and
`Charnitski ................................................................................................... 19
`B. Ground II: Claim 1 Is Obvious over Zaccone in View of Gerry (or
`Marton) and Charnitski .............................................................................. 21
`"An oscillating, floor treating device comprising" .................................... 21
`"a power source having a rotatable drive shaft, wherein the rotatable
`drive shaft rotates around an axis of rotation" ........................................... 22
`"a flywheel having an aperture configured to receive the drive shaft" ..... 22
`"a counterbalance connected to and extending radially from the
`flywheel" .................................................................................................... 22
`
`1.
`2.
`
`3.
`4.
`
`
`
`ii
`
`

`
`5.
`
`"a floor treating attachment configured to connect to the counterbalance
`at at least two different distances from the axis of rotation of the drive
`shaft, a first distance being at least 0.400 inch from the axis of rotation
`of the drive shaft" ....................................................................................... 23
`6. Motivation to Combine Zaccone with Gerry (or Marton) and Charnitski 25
`C. Ground III: Claim 5 Is Obvious over Lancaster in View of Bangerter,
`Gerry (or Marton), and Charnitski ............................................................ 26
`1. The Elements of Claim 1 ........................................................................... 27
`2.
`"a plug bearing configured to be positioned between a bottom of the
`counterbalance and a top of the floor treating attachment" ....................... 27
`3. Motivation to Combine Lancaster, Bangerter, Gerry (or Marton), and
`Charnitski ................................................................................................... 27
`D. Ground IV: Claim 5 Is Obvious over Zaccone in View of Gerry (or
`Marton) and Charnitski .............................................................................. 28
`1. The Elements of Claim 1 ........................................................................... 28
`2.
`"a plug bearing configured to be positioned between a bottom of the
`counterbalance and a top of the floor treating attachment" ....................... 28
`3. Motivation to Combine Zaccone, Gerry (or Marton), and Charnitski ...... 29
`V. MANDATORY NOTICES ........................................................................... 29
`A.
`Real Party in Interest ................................................................................. 29
`B.
`Related Matters .......................................................................................... 29
`C.
`Lead and Backup Lead Counsel ................................................................ 29
`D.
`Service Information ................................................................................... 29
`VI. PAYMENT OF FEES ................................................................................... 30
`VII. CONCLUSION .............................................................................................. 30
`
`
`
`
`
`iii
`
`

`
`LIST OF EXHIBITS
`
`
`U.S. Patent No. 8,522,385 to Geurkink
`
`U.S. Patent No. 6,938,295 to Lancaster et al.
`
`U.S. Patent No. 3,482,362 to Bangerter et al.
`
`U.S. Patent No. 3,550,324 to Gerry
`
`U.S. Patent No. 7,294,095 to Charnitski
`
`U.S. Patent No. 3,448,476 to Zaccone
`
`U.S. Patent No. 8,356,375 to Geurkink
`
`U.S. Provisional Application No. 61/490,620 of Geurkink
`
`Declaration of Mr. Geurkink under 37 CFR 1.132 Dated April
`3, 2013
`
`Office Action Dated April 24, 2013
`
`Applicant-Initiated Interview Summary Dated May 22, 2013
`
`International Publication No. WO 2008/062280 to Marton
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`
`
`iv
`
`

`
`I.
`
`INTRODUCTION
`
`Petitioner Mytee Products, Inc. ("Petitioner") requests Inter Partes Review
`
`("IPR") of claims 1 and 5 ("the Challenged Claims") of U.S. Patent No. 8,522,385
`
`("the '385 Patent, Ex. 1001) and cancellation of each of the Challenged Claims as
`
`unpatentable.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the '385 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR of the Challenged Claims.
`
`Specifically: (1) Petitioner is not the owner of the '385 Patent; (2) neither
`
`Petitioner, nor any party in privity with Petitioner, has filed a civil action
`
`challenging the validity of any claims of the '385 Patent; (3) the '385 Patent has not
`
`been the subject of a prior IPR by Petitioner or a privy of Petitioner; (4) this
`
`Petition is timely filed as it has never been asserted against Petitioner in litigation;
`
`and (5) this Petition is filed after the later of (a) the date that is nine months after
`
`the date of grant of the '385 Patent, or (b) the date of termination of any post-grant
`
`review of the '385 Patent.
`
`III.
`
`IDENTIFICATION OF CHALLENGE
`
`A. Overview of the ‘385 Patent
`
`The '385 Patent is entitled "High Efficiency Floor Treating System and
`
`Method" and was issued on September 3, 2013 to John Franklin Geurkink from
`
`
`
`1
`
`

`
`application no. 13/477,155 filed on May 22, 2012.
`
`The ‘385 Patent is a continuation-in-part of U.S. patent no. 8,356,375 filed
`
`on June 15, 2010 and issued on September 3, 2013 ("the ‘375 patent,” Exhibit
`
`1007). The ‘385 Patent also claims priority to provisional patent application no.
`
`61/490,620 filed on May 27, 2011 ("the '620 Provisional Application," Ex. 1008).
`
`1. The '385 Patent Specification
`The ‘385 Patent discloses a floor treating system and method, in which a
`
`flywheel 210 is driven by drive shaft 200 powered by a power source 150. A
`
`counterbalance 230, depicted as a disk carrying a counterweight 220 on one edge,
`
`is coupled to flywheel 210 and has a bolt 270 at its center. Bolt 270 is radially
`
`offset from drive shaft 200 and supports a floor treating attachment 130 via a plug
`
`bearing 240. Ex. 1001 at FIG. 2; col. 2, lines 47-55.
`
`FIG. 2 of the ‘385 Patent, reproduced below, is believed to be representative:
`
`
`
`2
`
`
`
`

`
`The additional disclosure in the ‘385 Patent over the ‘375 Patent relates to
`
`the improved floor cleaning properties derived from having the longitudinal axis of
`
`drive shaft 200 a distance of at least 0.400 inches from floor treating attachment
`
`130. While the '385 Patent identified three possible coupling points of floor
`
`treating attachment 130, the described embodiments all relate to a distance
`
`between the longitudinal axis of drive shaft 200 and the longitudinal axis of floor
`
`treating attachment 130 that is 0.400 inch or more. Id. at col. 3, lines 49-60; col. 5,
`
`lines 31-42.
`
`2. Highlights of the '385 Patent Prosecution History
`Throughout prosecution, the examiner held that positioning a floor treating
`
`attachment at a distance of at least 0.400 inch from the drive shaft was obvious in
`
`view of the prior art.
`
`In an Office Action notified on April 24, 2004 (Ex. 1010), the examiner held
`
`that the pending claims were obvious both in view of the '375 Patent and of other
`
`prior art. The examiner also responded to an affidavit dated and filed on April 3,
`
`2013 (Ex. 1009), in which applicant declared that having a floor treating
`
`attachment at a distance of at least 0.400 inch from the drive shaft generated
`
`“superior improvements” in floor cleaning properties, by remarking that the data in
`
`the affidavit merely showed that as the distance increased, floor treating ability
`
`improved and that such result was to be expected from the greater orbital motion.
`
`
`
`3
`
`

`
`Ex. 1010 at pages 2-5. Applicant provided no other objective evidence of non-
`
`obviousness.
`
`In an Interview Summary dated May 22, 2013 (Ex. 1011), the examiner
`
`remarked that allowance of the pending claims might be possible only if structural
`
`differences were shown from main reference Lancaster (Ex. 1002, discussed at
`
`section III(F)(2) below). After Applicant filed an amendment and a Terminal
`
`Disclaimer, claims 23-31 (claims 1-9 of the ‘385 patent) and newly presented
`
`claims 32-42 (claims 10-20 of the ‘385 Patent) were allowed.
`
`B. Claim Construction of the Challenged Claims
`
`The ‘385 Patent is unexpired and will not expire before a final written
`
`decision is issued. Therefore, in this proceeding, claims must be given their
`
`broadest reasonable interpretation ("BRI") in light of the specification. 37 CFR
`
`42.100(b).
`
`In the constructions below, Petitioner identifies subject matter within the
`
`claims that is read with their BRI. Petitioner expressly reserves the right to advance
`
`a different construction for any term in any district court litigation, which employs
`
`a different construction standard.
`
`1. “power source”
`The '385 Patent does not define "power source." For purposes of this review,
`
`Petitioner adopts the construction: “a device or system that provides rotational
`
`
`
`4
`
`

`
`energy to a shaft.” This construction is consistent with the specification of the '385
`
`Patent. Ex. 1001 at col. 1, lines 44-47.
`
`2. "counterbalance" (Claims 1, 5)
`The '385 Patent does not define "counterbalance." For purposes of this
`
`review, Petitioner adopts the construction: "a member that is attached to, and
`
`rotatable about, a shaft and that is integral with, or carries, one or more weights in
`
`a position spaced from the shaft." This construction is consistent with the
`
`specification of the '385 Patent. Ex. 1001 at FIGS. 2 and 7 (showing a rotatable
`
`disk 230 that carries counterweights 220, or 220a and 220b at a position spaced
`
`from the axis of rotation); col. 2, lines 63 - 66.
`
`3. "radially" (Claim 1)
`The '385 Patent does not define "radially." For purposes of this review,
`
`Petitioner adopts the construction "extending along a direction emanating from a
`
`common central point." This construction is consistent with the specification of the
`
`'385 Patent. See, e.g. Ex. 1001 at claims 1, 10.
`
`4. “configured to connect […] at at least two different distances”
`(Claims 1, 5)
`This wording is within the limitation “a floor treating attachment configured
`
`to connect to the counterbalance at at least two different distances from the axis of
`
`rotation of the drive shaft” (emphasis added). Therefore, “configured to connect
`
`[…] at at least two different distances” describes a structural feature of the floor
`
`
`
`5
`
`

`
`treating attachment that enables connection at two or more points.
`
`The ‘385 Patent defines “configured to connect” as follows:
`
`For example, the means for connecting the floor treating attachment
`130 to the counterbalance 230 may be configured to connect the floor
`treating attachment 130 to the counterbalance 230 at a distance d1
`from the axis of rotation R, at a distance d2 from the axis of rotation
`R, and at a distance d3 from the axis of rotation R. Each distance from
`the axis of rotation R corresponds to a different speed of oscillating
`motion that may be imparted from the drive shaft 200 to the floor
`treating attachment 130.
`Ex. 1001 at col. 2, lines 47-56. The above portion of the '385 Patent
`
`indicates that, while the floor treating attachment is "configured to connect" at two
`
`points, the actual connection of the floor treating attachment may be at a single
`
`point in order for the floor treating attachment to have an oscillating motion.
`
`That may be achieved, for example by having a floor treating attachment
`
`with a shaft that may be inserted in an opening in a first counterbalance having an
`
`opening defined at a first offset distance, and in an opening in a second
`
`counterbalance defined at a second offset distance; or by providing a
`
`counterbalance having a plurality of openings defined at different offset distances.
`
`To the extent that Patent Owner may allege that claims 1 and 5 should be
`
`construed as reciting that the counterbalance has a plurality of openings, Petitioner
`
`submits that "configured to connect" relates to the floor treating attachment and
`
`that a counterbalance having a plurality of openings is not positively recited in the
`
`claims.
`
`
`
`6
`
`

`
`Under the BRI standard, therefore, Petitioner adopts the construction of
`
`"configured to connect […] at at least two different distances" as: “having a
`
`structural feature which enables a connection at one of two or more distances.”
`
`5. "plug bearing" (Claim 5)
`The '385 Patent does not define "plug bearing." For purposes of this review,
`
`Petitioner adopts the construction: "a housing physically separable from the floor
`
`treating attachment and containing one or more bearings rotatable within the
`
`housing." This construction is consistent with the specification of the '385 Patent.
`
`Ex. 1001 at FIGS. 4, 5, 7.
`
`C. Level of Skill in the Art
`
`The level of skill in the art is apparent from the cited art. A person of
`
`ordinary skill in the art in the field of the '385 Patent would have been someone
`
`with a good working knowledge of orbital machines and familiar with surface
`
`treatment machines. That person would have gained this knowledge either through
`
`education and training, several years of practical experience, or a combination of
`
`these.
`
`D.
`
`Statement of Precise Relief for Each Claim Challenged
`
`Claims for Which Review Is Requested
`1.
`Petitioner requests IPR under 35 USC 111 of claims 1 and 5 of the '385
`
`Patent, and cancellation of these claims as unpatentable.
`
`
`
`7
`
`

`
`2. Citation of Prior Art
`(i) U.S. patent no. 6,938,295 to Lancaster et al. ("Lancaster"), filed on April
`
`9, 2003 and issued on September 6, 2005, available as prior art under 35 USC
`
`102(b);
`
`(ii) U.S. patent no. 3,482,362 to Bangerter et al. ("Bangerter"), filed on
`
`January 28, 1966 and issued on December 9, 1969, available as prior art under 35
`
`USC 102(b);
`
`(iii) U.S. patent no. 3,550,324 to Gerry ("Gerry"), filed on April 17, 1968
`
`and issued on December 29, 1970, available as prior art under 35 USC 102(b);
`
`(iv) U.S. patent no. 7,294,095 to Charnitski ("Charnitski"), filed on May 4,
`
`2004 and issued on November 13, 2007, available as prior art under 35 USC
`
`102(b);
`
`(v) U.S. patent no. 3,448,476 to Zaccone ("Zaccone"), filed on March 6,
`
`1987 and issued on June 10, 1969, available as prior art under 35 USC 102(b);
`
`(vi) International publication no. WO 2008/062280 to Marton ("Marton"),
`
`filed on November 20, 2007 and published on May 29, 2008, available as prior art
`
`under 35 USC 102(b).
`
`3. Statutory Grounds of Challenge
`Ground I. Claim 1 is obvious under 35 USC 103 over Lancaster,
`
`Bangerter, Gerry (or Marton), and Charnitski.
`
`
`
`8
`
`

`
`Ground II. Claim 1 is obvious under 35 USC 103 over Zaccone, Gerry (or
`
`Marton), and Charnitski.
`
`Ground III. Claim 5 is obvious under 35 USC 103 over Lancaster,
`
`Bangerter, Gerry (or Marton), and Charnitski.
`
`Ground IV. Claim 5 is obvious under 35 USC 103 over Zaccone, Gerry (or
`
`Marton), and Charnitski.
`
`E. Overview of the Cited Prior Art
`
`For decades before 2009, there was an extensive amount of prior art
`
`describing oscillating surface treating devices, in which surface treating
`
`attachments had axes offset from the axes of the drive shafts. A person of skill in
`
`the art would have been familiar with this prior art and would have found it to
`
`render obvious the claimed floor treating devices for the reasons set forth in
`
`sections IV(A)-(D) below. A brief overview of the prior art and what it taught the
`
`person of ordinary skill is provided below.
`
`1. Lancaster
`Lancaster discloses an orbital floor treatment device. Ex. 1002, Title. The
`
`figure of Lancaster, reproduced below, is believed to be representative:
`
`
`
`9
`
`

`
`
`
`A first component 12 is shaped like a disk and is coupled to a flywheel
`
`spindle 12A, which receives rotational energy from a power source (10, 6, 6A). A
`
`second component 13 is also shaped like a disk and carries a counterweight 20 at
`
`one side. Second component 13 has a larger diameter than first component 12 and
`
`is connected to the lower surface of first component 12. A floor treating assembly
`
`14 is disposed below second component 13 and has a rotational axis that is parallel
`
`to, but radially offset from, flywheel spindle 12A. Id. at the figure; col. 2, lines 12-
`
`32.
`
`A bearing housing 16 with a bearing 17 is disposed between second
`
`component 13 and floor treating assembly 14, and is separated from floor treating
`
`assembly 14 by a spacer 18. Id. at the figure; col. 2, lines 36-39.
`
`
`
`
`
`10
`
`

`
`2. Bangerter
`Bangerter discloses a power tool such as a rotary sander or buffer. Ex. 1003
`
`at col. 1, lines 22-23. FIG. 1 of Bangerter, reproduced below, is believed to be
`
`representative:
`
`
`
`A threaded member 2, driven by a motor, causes a cup shaped housing 1 to
`
`rotate. A rotatable eccentric 3 is coupled to cup shaped housing 1 by pins and is
`
`also coupled to a bearing 7. A spindle 6, parallel to but radially offset from
`
`threaded member 2, rotates within bearing 7 and coupled to a work head 9. Ex.
`
`1003 at FIG. 1 and col. 2, lines 8-26.
`
`3. Zaccone
`Zaccone is directed to polishing machines. Ex. 1006 at col. 1, line 26. FIG. 2
`
`of Zaccone, reproduced below, is believed to be representative:
`
`
`
`11
`
`
`
`

`
`A drive shaft 16 is operated by a motor and has a lower end received in a
`
`housing 12, which has a cylindrical upper portion and a wider, annular lower
`
`portion. A balancing member 60 has a larger diameter than housing 12 and is
`
`connected to the lower surface of housing 12. A polishing head 26 is disposed
`
`below balancing member 60 and is parallel to, but radially offset from, drive shaft
`
`18. Id. at FIGS. 1 and 2; col. 2, line 52 - col. 3, line 69.
`
`A ball bearing assembly 39 is disposed below balancing member 60 and
`
`within a recess 32 defined at the top of polishing head 26. Id. at FIG. 2; col. 3, lines
`
`9-13.
`
`4. Gerry
`Gerry discloses a surface treating apparatus, in which a shaft 21 is received
`
`in a carrier means 35 having a disk shape and carrying weighting portions 80 and
`
`81 on opposite edges and opposite faces. A stub shaft 41 is received in a radially
`
`offset opening of carrier means 35 and rotates within a bearing system 64. A
`
`surface treating head 40 rotates about stub shaft 41.
`
`FIG. 3 of Gerry, reproduced below, is believed to be representative:
`
`
`
`12
`
`

`
`
`
`Gerry discloses that it is "most practical" to have a distance between shaft 21
`
`and stub shaft 41 of 0.2 inch - 2.0 inch to extend operation of the surface treating
`
`head to an appreciable extent. Ex. 1004 at FIG. 3; col. 2, line 39 – col. 5, line 17;
`
`col. 6, lines 45-63.
`
`5. Charnitski
`Charnitski discloses a vibrating exercise device. Ex. 1005 at col. 1, line 6. A
`
`disk 42 is driven by a shaft rotating about an axis 30. An oscillating surface 26 is
`
`coupled to a disk 42 and rotates with an orbital movement about an axis 28 that is
`
`in offset position, at a distance d from axis 30. Id. at FIG. 3; col. 4, lines 55-62; col.
`
`5, lines 27-29; col. 6, lines 56-60.
`
`FIG. 3 of Charnitski, reproduced below, is believed to be representative:
`
`
`
`13
`
`

`
`
`
`Charnitski discloses that the amplitude of oscillation of surface 26 may be
`
`varied by mounting surface 26 onto disk 42 at different distances d from axis 30 of
`
`counterbalancing disk 42 as desired by the user, and that this variation in distance d
`
`may be achieved in different ways. In one embodiment, different holes are
`
`provided in disk 42 at different distances d from axis 30, so that oscillating surface
`
`26 can then be fastened in any of those holes, for example, with threaded fasteners
`
`or pinned connections. Id. at FIG. 3; col. 6, lines 39-60.
`
`6. Marton
`Marton discloses an orbital, off-centric sanding and grinding apparatus. A
`
`drive shaft 16 rotates an abrasive disc support 10 about an axis 20 that is radially
`
`offset from the center 12 of abrasive disc support 11 and causes an abrasive
`
`member, mounted on support 10, to travel in an elliptical path. Ex. 1012 at page 6,
`
`lines 20-32.
`
`FIG. 2 of Marton, reproduced below, is believed to be representative:
`
`
`
`14
`
`

`
`
`
`Marton also discloses that the distance between center 12 and offset shaft 16
`
`is typically 10 mm (0.400 inch) but may vary between 5 and 15 mm (0.2-0.6 inch)
`
`depending from the application. Marton further discloses that an operator may
`
`apply a different offset by replacing a first disc support 10 having a first offset with
`
`a second disc support 10 having a different offset. Ex. 1012 at page 7, line 20 -
`
`page 8, line 10.
`
`IV. DETAILED EXPLANATION OF THE CHALLENGE
`
`A. Ground I: Claim 1 Is Obvious over Lancaster in View of
`Bangerter, Gerry (or Marton), and Charnitski
`Claim 1 is obvious over Lancaster in view of Bangerter, Gerry (or Marton),
`
`and Charnitski for the reasons set forth below. An analysis of the claim limitations
`
`follows.
`
`1. "An oscillating, floor treating device comprising"
`To the extent that the preamble may be considered a limitation of the claim,
`
`
`
`15
`
`

`
`Lancaster discloses an orbital floor treating device. Ex. 1002 at Abstract. Being an
`
`orbital machine, the device disclosed by Lancaster inherently produces an
`
`oscillating motion.
`
`The examiner has recognized that Lancaster discloses this preamble. Ex.
`
`1010 at page 4.
`
`2. "a power source having a rotatable drive shaft, wherein the
`rotatable drive shaft rotates around an axis of rotation"
`Lancaster discloses a power source that includes a motor and pulleys
`
`powering a rotatable flywheel spindle 12A, wherein flywheel spindle 12A rotates
`
`around an axis of rotation. Ex. 1002 at figure; col. 1, line 66 - col. 2, line 3; col. 3,
`
`lines 12-16.
`
`The examiner has recognized that Lancaster discloses this limitation. Ex.
`
`1010 at page 4.
`
`3. "a flywheel having an aperture configured to receive the drive
`shaft"
`Lancaster discloses a flywheel spindle 12A that is coupled to a first
`
`component 12, which operates as a flywheel (see, e.g. the identification of spindle
`
`12A as “flywheel spindle”). Ex. 1002 at figure; col. 2, lines 16-20; claim 1.
`
`The examiner has recognized that element 12 of Lancaster is readable on the
`
`claimed flywheel. Ex. 1010 at page 4.
`
`Lancaster does not expressly disclose that flywheel 12 has an aperture
`
`
`
`16
`
`

`
`configured to receive flywheel spindle 12A. It is known in the art that a shaft may
`
`be attached to a disk in a variety of manners, for example, by welding or by
`
`engaging the drive shaft in an opening of the disk. The '385 Patent does not
`
`disclose any advantages from coupling the drive shaft in an opening in the
`
`flywheel over any other coupling method, therefore, connecting flywheel
`
`spindle12A with flywheel 12 is merely an obvious design choice.
`
`To the extent that Patent Owner may challenge this design choice, Bangerter
`
`discloses a cup-shaped housing 12 that operates as a flywheel and that has an
`
`aperture configured to receive the drive shaft. Ex. 1003 at FIG. 1.
`
`The examiner has also cited Bangerter as disclosing that the shaft is attached
`
`in an opening of the flywheel. Ex. 1010 at page 4.
`
`4. "a counterbalance connected to and extending radially from
`the flywheel"
`Lancaster discloses a second component 13, which is coupled to a bottom
`
`face of flywheel 12. Second component 13 emanates from the same central point
`
`as flywheel 12 and extends beyond flywheel 12. Ex. 1002 at figure; col. 2, lines
`
`16-23. Second component 13 operates as a counterbalance, as evidenced by having
`
`counterweight 20 coupled at one edge. Id. at the figure.
`
`The examiner has recognized that second component 13 is readable on the
`
`claimed "counterbalance." Ex. 1010 at page 4.
`
`Gerry also discloses carrier means 35, which operates as a counterbalance as
`
`
`
`17
`
`

`
`evidenced by being rotatable by shaft 21 and having weighting portions 80 and 81
`
`attached at opposite edges and on opposite faces of carrier means 35. Ex. 1004 at
`
`FIG. 3.
`
`5. "a floor treating attachment configured to connect to the
`counterbalance at at least two different distances from the axis
`of rotation of the drive shaft, a first distance being at least
`0.400 inch from the axis of rotation of the drive shaft"
`Lancaster discloses a floor treating assembly 14, which has a rotational axis
`
`in an offset position in relation to spindle12A. Ex. 1002 at the figure.
`
`Gerry discloses a head 40 connected to carrier means 35, which may be a
`
`brush or a pad that scrubs, cleans, waxes, buffs or abrades a work surface. Gerry
`
`further discloses that it is "most practical" to have an offset distance between 0.2
`
`inch and 2.0 inches separating drive shaft 21 form stub shaft 41, and describes a
`
`specific example of 0.5 inch. Ex. 1004 at FIGS. 1 and 3; col. 1, lines 44-49; col. 3,
`
`lines 21-26; col. 6, lines 13-17 and 45-54.
`
`In the alternative, Marton discloses an offset distance between the center of
`
`rotatable support 10 and shaft 16 that ranges from less than 5 mm (0.2 inch) to
`
`more than 15 mm (0.6 inch) depending upon the application. Ex. 1012 at page 7,
`
`line 31 page 8, line 10.
`
`The floor treating attachment disclosed by Gerry is “configured to connect to
`
`the counterbalance at at least two different distances from the axis of rotation of
`
`the drive shaft” because it is configured to be connected to the counterbalance at
`
`
`
`18
`
`

`
`essentially any desired distance from the axis of rotation of the drive shaft. There is
`
`no structural feature in the floor treating attachments disclosed by Lancaster or
`
`Gerry that would prevent them from being coupled to the counterbalance at a first
`
`point that is 0.400 inch or more distant from the drive shaft in a first instance, or at
`
`a second, different distance in a second instance.
`
`To the extent that Patent Owner may allege that claim 1 should be read as
`
`reciting that the counterbalance has a plurality of attachment points, Petitioner
`
`submits that a counterbalance with a plurality of attachment points is not positively
`
`recited in the claim.
`
`In the alternative, Charnitski discloses an orbital apparatus, in which an
`
`oscillating surface 26 is coupled to a disk 42. Oscillating surface 26 rotates about
`
`an axis 28 parallel to, and offset from, rotation axis 30 of disk 42, at a distance d
`
`from axis 30. Charnitski further discloses that the amplitude of oscillation of
`
`surface 26 may be varied by mounting oscillating surface 26 onto disk 42 at
`
`different distances d from the axis of disk 42, for example, by fastening oscillating
`
`surface 26 in any of several different holes provided on surface 26. Ex. 1005 at
`
`FIG. 3; col. 6, lines 39-60.
`
`6. Motivation to Combine Lancaster with Gerry (or Marton) and
`Charnitski
`Lancaster discloses a device having all the claimed limitations except for a
`
`floor treating attachment configured to connect to the counterbalance at at least
`
`
`
`19
`
`

`
`two different distances from the axis of rotation of the drive shaft, a first distance
`
`being at least 0.400 inch. To the extent that Lancaster does not expressly disclose
`
`that the flywheel has an aperture configured to receive the driving spindle, that
`
`limitation is an obvious design choice or is disclosed by Bangerter.
`
`A person of skill in the art would have learned from Gerry that the amount
`
`of space between the drive shaft and the shaft of the counterbalance may be varied,
`
`for example, between 0.2 inch and 2.0 inches. The same person would have
`
`learned from Gerry that a point in head 40 may trace out a path on the surface to be
`
`treated that changes with the radial distance of that point from drive shaft 38 by as
`
`much as twice as the distance r between drive shaft 21 and stub shaft 41. Ex. 1004
`
`at col. 4, lines 41-48. He (she) would have further learned from Gerry that it is
`
`desirable to set the distance r at different values in order to achieve appreciable
`
`changes in the surface treatment pattern. Id. at col. 6, lines 45-54. That would
`
`enable him (her) to handle different floor treating situations more efficiently.
`
`In the alternative, that person of skill in the art would have also learned from
`
`Marton that the floor treating attachment may be positioned at an offset distance
`
`between 0.2 inch and 0.6 inch, and that it is desirable to change that offset di