Trials@uspto.gov
`571.272.7822
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` Paper 23
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` Entered: April 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
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`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
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`571.272.7822
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` Paper 23
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` Entered: April 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00178
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`Digital Check Corp. d/b/a ST Imaging (“Petitioner”) filed a Petition
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`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–3, 5–9, 20–35, 37, 39–41, 43, 44, 47, 53–57, 63–68, 74, 79, 81,
`84–87, 91–96, and 101 of U.S. Patent No. 9,179,019 B2 (“the ’019 patent”).
`Paper 2 (“Pet.”). Applying the standard set forth in 35 U.S.C. § 314(a), we
`granted Petitioner’s request and instituted an inter partes review of claims
`1–3, 5–7, 20–28, 31, 41, 43, 44, 53, and 63; we declined to institute a review
`as to the other claims challenged. Paper 6 (“Dec.”).
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`During the trial, Patent Owner timely filed a Response (Paper 11, “PO
`Resp.”), to which Petitioner timely filed a Reply (Paper 16, “Reply”).
`Petitioner requested an oral hearing, but then withdrew its request and we
`canceled the hearing. See Papers 18, 22.
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`Additionally, Patent Owner filed a Motion to Exclude Evidence
`(Paper 17), to which Petitioner filed an Opposition (Paper 20), and Patent
`Owner filed a Reply (Paper 21).
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. Based on the record
`before us, we determine that Petitioner has shown, by a preponderance of the
`evidence, that claims 1–3, 5–7, 20–25, 27, 28, 31, 41, 43, 44, 53, and 63 of
`the ’019 patent are unpatentable. Petitioner has not shown that claim 26 of
`the ’019 patent is unpatentable.
`I. BACKGROUND
`A. The ’019 Patent (Ex. 1001)
`The ’019 patent describes a digital microform imaging apparatus
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`(DMIA) that may be used to view/scan a broad range of microfilm media
`types (e.g., microfilm, microfiche, 16 mm or 36 mm film roll). See
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`Ex. 1001, 1:19–20, 3:26–28. The DMIA can accommodate a broad range of
`image reduction ratios without the need to change zoom lenses. See id. at
`3:28–30, 7:56–59. Figure 4 of the ’019 patent is reproduced below:
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`Figure 4 illustrates a perspective view of a DMIA with the cover removed
`and as viewed from generally rearward of the apparatus. Id. at 3:65–67.
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`The DMIA illustrated in Figure 4 includes: microform media support
`44; chassis 66; mirror mount 78; first lead screw 86; second lead screw 88;
`lens 90; area sensor 97; first carriage 92; second carriage 98; first motor 100;
`second motor 108; timing pulleys 102, 106, 110, 114; and belts 104, 112.
`See id. at 5:8–6:11. Microform media support 44 is configured to support a
`microform media. Id. at 5:8–10. A fold mirror (not shown) reflects incident
`light transmitted through microform media and is connected to mirror mount
`78, which is connected to chassis 66. Id. at 5:31–33, 5:36–38. Lens 90 is
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`connected to first carriage 92, which is linearly adjustable by rotating first
`lead screw 86. Id. at 5:43–45. Area sensor 97 is connected to second
`carriage 98, which is linearly adjustable by rotating second lead screw 88.
`Id. at 5:52–54. First motor 100 is rotationally coupled to first lead screw 86
`by timing pulley 102, belt 104 with teeth, and timing pulley 106; and second
`motor 108 is rotationally coupled to second lead screw 88 by timing pulley
`110, belt 112 with teeth, and timing pulley 114. Id. at 6:7–9.
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`A controller (not shown) is electrically connected to first motor 100,
`second motor 108, and area sensor 97. Id. at 6:11–13. The controller
`receives commands and inputs, controls first and second motors 100, 108
`and other components of the DMIA, and outputs an image data of area
`sensor 97. Id. at 6:13–17. The layout of the DMIA, including separately
`adjustable area sensor 97 and lens 90, and algorithms for moving the lens
`and sensor to appropriate respective locations to achieve proper
`magnification and focus of the image, allow the DMIA to autofocus to
`accommodate different reduction ratios of different film media without the
`need for iterative measurements and refocusing of lens 90. Id. at 5:61–7:3.
`The DMIA depicted in Figure 4 includes additional components not
`described.
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`B. Illustrative Claim
`Claims 1, 41, and 63 are independent claims. Claim 1 is illustrative of
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`the subject matter at issue.
`1. A digital microform imaging apparatus, comprising:
`a chassis;
`a fold mirror supported by the chassis and including a
`reflecting surface for directing light from a first optical axis to a
`second optical axis;
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`a first elongated and substantially strait lead member
`supported by the chassis and aligned along a substantially
`horizontal axis, the first lead member including an elongated
`shaft;
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`a first drive mechanism supported by the chassis and
`extending alongside and spaced apart from the first lead
`member;
`a first motor including a first motor shaft that engages the
`first drive mechanism;
`a first carriage coupled to the first lead member for
`movement there along and coupled to the chassis via the first
`drive mechanism and the first motor such that rotation of the
`first motor shaft causes the first carriage to move along the first
`lead member along a trajectory that is substantially parallel to
`the second optical axis;
`an area sensor supported by the first carriage and aligned
`with the second optical axis for movement along the second
`optical axis within a first range to adjust a distance between the
`area sensor and the fold mirror; and
`a lens supported by the chassis along the second optical
`axis and positioned between the area sensor and the fold mirror;
`wherein the lens and the area sensor are located on a first
`lateral side of the first lead member and located on a first lateral
`side of the first drive mechanism.
`C. Instituted Grounds of Unpatentability
`Petitioner relies on the following references:
`1. U.S. Patent Application No. 2004/0012827 A1, published
`Jan. 22, 2004 (“Fujinawa”) (Ex. 1004).
`2. U.S. Patent No. 5,585,937, issued Dec. 17, 1996 (“Kokubo”)
`(Ex. 1005).
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`We instituted trial under 35 U.S.C. § 103(a) based on the following
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`combination of references. Dec 23.
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`References
`Fujinawa and Kokubo
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`Claims
`1–3, 5–7, 20–28, 31,
`41, 43, 44, 53, 63
`In support of its contentions, Petitioner submitted a declaration by its
`witness, Anthony J. Senn, PE. Ex. 1002. In response, Patent Owner
`submitted a declaration by its witness, Jonathan D. Ellis, PhD. Ex. 2005.
`Both experts were cross-examined during the trial, and transcripts of their
`depositions are in the record. Exs. 2007 (Senn deposition); 1012 (Ellis
`deposition).
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`D. Related Proceedings
`Patent Owner identifies the ’019 patent as a continuation of U.S.
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`Patent No. 8,269,890 (’890 patent) and U.S. Patent No. 8,537,279 (’279
`patent). Paper 4. Petitioner and Patent Owner identify numerous matters as
`related to this proceeding, including currently pending U.S. Patent
`Application No. 14/931,583, which is a continuation of the ’019 patent;
`Petitioner’s concurrently filed Petition for inter partes review of the ’279
`patent (IPR2017-00177); and a number of district court litigation matters
`involving the ’019, ’890, and ’279 patents. See Paper 4; Pet. 2.
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter 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 to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of non-obviousness, i.e., secondary
`considerations such as commercial success, long felt but unsolved needs,
`and failure of others.1 Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). The obviousness inquiry further requires an analysis of “whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with
`some rational underpinning to support the legal conclusion of
`obviousness”)).
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`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art at the time of the
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`filing would have had at least some experience with microform imaging
`apparatuses and would have had at least a bachelor of science degree in
`either electrical engineering or mechanical engineering with at least three
`years’ experience designing electro-mechanical products, including imaging
`equipment such copiers, scanners, and/or microform scanners and readers.
`Pet. 15–16 (citing Ex. 1002 ¶ 40). Patent Owner asserts a person of ordinary
`skill in the art “would have an undergraduate degree in mechanical or optical
`engineering and 3 years of experience working with or designing scanners,
`camera systems or printers, which involve opto-mechanical systems similar
`to that described in the ’019 Patent and the prior art.” PO Resp. 4 (citing Ex.
`2005 ¶ 20).
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`Our decision does not turn on the minor differences between the
`definitions, particularly as Petitioner asserts that, under either definition, its
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`1 The record does not include arguments or evidence regarding objective
`indicia of non-obviousness.
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`analysis remains the same. See Reply 2. Both Petitioner and Patent Owner
`advocate a similar level of experience. Accordingly, we accept the level of
`skill advocated by Patent Owner, with the addition of Petitioner’s
`identification of working with microform scanners and readers as
`permissible experience and electrical engineering as a permissible
`undergraduate degree.
`C. Claim Construction
`In an inter partes review, claims of an unexpired patent are interpreted
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`using the broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In our Institution
`Decision, we did not find it necessary to construe any terms, and accorded
`them their ordinary and customary meaning. Dec. 7–8.
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`In its Response, Patent Owner asserts the district court in the parallel
`litigation issued its claim construction order and adopted the parties’
`stipulated construction of “first carriage.” PO Resp. 4. Patent Owner further
`asserts the district court concluded the preamble phrase “digital microform
`imaging apparatus” limits the claims. Id. Petitioner agrees the district court
`construction of “first carriage” is the broadest reasonable construction.
`Pet. 17. Petitioner further asserts the parties’ dispute whether the preamble
`limits the claims is not germane to this proceeding because each of the prior
`art references used in this petition discloses a “digital microform imaging
`apparatus.” Id.; Reply 2–3.
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`Although we have considered the construction of the terms anew in
`light of the full trial record, we determine that we need not explicitly
`construe any term to resolve the issues before us. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
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`“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”).
`D. Obviousness Over Fujinawa and Kokubo
`Petitioner challenges claims 1–3, 5–7, 20–28, 31, 41, 43, 44, 53, and
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`63 as obvious under 35 U.S.C. § 103(a) over Fujinawa and Kokubo.
`Pet. 18–43, 46–53.
`1. Scope and Content of Fujinawa
`Fujinawa describes an image reading apparatus that can handle films
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`having different sizes. Ex. 1004 ¶ 3. Figure 4 of Fujinawa is reproduced
`below:
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`Figure 4 depicts one embodiment of an image reading apparatus during
`reading of roll film. Id. ¶ 22. Image reading apparatus 1 includes cartridge
`3, used to house roll film, and insertion opening 6, used for inserting strip
`film and slide-mounted film. Id. ¶ 33. Image reading apparatus 1 further
`includes reading device motor 26, lens motor 27, line sensor 28, and
`reflective mirror 30. Lens 29 is supported by a worm that couples lens 29 to
`the rotating shaft of lens motor 27 so that it can move in accordance with
`rotation of the rotating shaft. Id. ¶ 59. Line sensor 28 is supported by a
`worm that couples line sensor 28 to rotating shaft of reading device motor 26
`so that the position of the light-receiving surface can be moved in
`accordance with the rotation of the rotating shaft. Id.2 Fujinawa further
`describes that an area-type sensor could be provided instead of line sensor
`28. Id. ¶¶ 49, 112. A CPU (not depicted) determines the type of film
`inserted into image reading apparatus 1 from information provided by film
`information reading sensor 24 and film detection sensor 35. Id. ¶ 66. CPU
`separately drives reading motor 26 and lens motor 27 to adjust the reading
`scope and resolution according to the results of this determination. Id. ¶¶ 60,
`66. Figure 4 depicts additional components of image reading apparatus 1
`that are not described.
`2. Scope and Content of Kokubo
`Kokubo describes an image reading device which optically reads a
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`text image by moving an image reading unit, on which a line sensor and a
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`2 Because other sections of Fujinawa describe element 26 as “reading device
`motor” (see e.g., Ex. 1004 ¶¶ 39, 60), we agree with Petitioner that Fujinawa
`mislabels reading motor 26 in paragraph 59 as “take-up motor 26.” See Pet.
`25 n.2.
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`light source for text illuminating are mounted. Ex. 1005, 1:8–11. Figure 1
`of Kokubo is reproduced below:
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`Figure 1 is a plan view showing features of an image reading device with the
`upper part of the chassis cut away. Id. at 5:66–6:1. The image reading
`device comprises chassis 1, reading unit 6, and motor 7. Id. at 8:52–57,
`9:10–11. Reading unit 6 is supported by guide shaft 4 and rail 5, such that it
`is free to slide toward the front and rear of the image reading device. Id. at
`8:56–59. Image reading unit 6 may include a movable mirror, a lens tube
`consisting of a series of lenses, and a line sensor (components not depicted).
`Id. at 11:63–12:6. Motor 7 is provided with drive gear 7a on a rotation shaft,
`drive pulley 8 rotated by the drive force of drive gear 7a, driven pulley 9,
`and timing belt 10 wound around drive pulley 8 and driven pulley 9, which
`is also fixed to reading unit 6. Id. at 9:10–15. Reading unit 6 is therefore
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`moved by timing belt 10, which moves due to the rotation of motor 7. Id. at
`9:15–17. Figure 1 includes additional components not described.
`3. Independent Claim 1
`Petitioner contends the combination of Fujinawa and Kokubo teaches
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`the limitations recited in independent claim 1. Pet. 18–30. In support of its
`arguments, Petitioner relies on the testimony of Mr. Senn. See id. (citing
`Ex. 1002).
`a. digital microform imaging apparatus, chassis, fold mirror,
`first elongated and substantially straight lead member,
`first motor, and first carriage limitations
`Petitioner asserts Fujinawa discloses a digital microform imaging
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`apparatus “nearly identical” to the claimed digital microform imaging
`apparatus. Id. at 19. Petitioner further asserts Fujinawa discloses the
`claimed chassis, fold mirror, first elongated and substantially straight lead
`member, first motor, and first carriage limitations. Id. at 20–22, 25–26.
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`We have reviewed Petitioner’s analysis of these limitations recited in
`claim 1 and the supporting evidence. We are persuaded Petitioner
`establishes Fujinawa discloses these limitations for the reasons set forth by
`Petitioner. See id. For example, we agree with Petitioner that Fujinawa
`discloses a “digital microform imaging apparatus” through its description of
`an image reading apparatus that reads images and “digitizes” the images. Id.
`at 20 (citing Ex. 1004 ¶¶ 3, 64). As another example, we are persuaded by
`the analysis set forth by Petitioner and Mr. Senn that Fujinawa meets the
`first carriage limitation through its depiction of a carriage in Figure 4
`(structure to which sensor 28 is attached) and description that the position of
`sensor 28 can be moved in accordance with the rotation of the rotating shaft
`of the motor, which causes the first carriage to move along the lead member
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`along a trajectory substantially parallel to the second optical axis. See id. at
`25–26 (citing Ex. 1004, Fig 4, ¶ 59); Ex. 1002 ¶¶ 55, 56. Patent Owner has
`not raised arguments against these limitations in its Patent Owner Response;
`therefore, those arguments are waived. Novartis AG v. Torrent Pharm. Ltd.,
`853 F.3d 1316, 1330 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1381
`(Fed. Cir. 2016).3
`b. first drive mechanism, area sensor, and lens limitations
`Petitioner asserts the combination of Fujinawa and Kokubo discloses
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`“a first drive mechanism supported by the chassis and extending alongside
`and spaced apart from the first lead member.” See Pet. 21–25. Petitioner
`asserts Fujinawa discloses a drive mechanism where a motor turns a rotating
`shaft, which turns a lead screw (worm) threaded to a carriage, and when the
`lead screw rotates, it guides and drives the carriage along the optical axis.
`Id. at 23 (citing Ex. 1004 ¶ 59). Petitioner further asserts Kokubo discloses
`a drive mechanism (timing belt 10 and pulleys 8, 9) spaced apart from the
`first lead member (guide rail 5) and that the belt/pulley system is used to
`drive a carriage along a lead member (guide rail). Id. at 23–24 (citing
`Ex. 1005, Fig. 1, 9:11–17). Petitioner argues that Kokubo discloses the
`entire lead member limitation and the entire drive mechanism limitation in a
`way that its pulley and belt drive mechanism and its guide rail lead member
`could be simply substituted for Fujinawa’s lead screw (worm) drive
`mechanism. Id. at 24. Petitioner contends one of skill in the art at the time
`of the invention of the ’019 patent would have known to simply substitute
`one well-known drive mechanism for moving a carriage along an optical
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`3 As in NuVasive, the Scheduling Order in this proceeding cautioned Patent
`Owner that “any arguments for patentability not raised in the response will
`be deemed waived.” Paper 7, 6.
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`path (Fujinawa’s motor that turns a lead screw) for another well-known
`drive mechanism for moving a carriage along an optical path (Kokubo’s belt
`and pulley drive mechanism) to achieve a predictable result. Id. at 24–25;
`see also id. at 23 (asserting that one of skill in the art would recognize that
`Kokubo’s drive mechanism could be simply substituted for Fujinawa’s drive
`mechanism to achieve the same, predictable, result). Petitioner’s
`contentions are supported by the testimony of Mr. Senn. See Ex. 1002
`¶¶ 76, 77, 101–104.
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`Petitioner further contends that the combination of Fujinawa and
`Kokubo discloses the area sensor and lens limitations. Pet. 26–30.
`Petitioner asserts Fujinawa discloses the sensor limitation through its
`description that the image reading apparatus comprises sensor 28, which
`may be a line sensor or an area sensor, and that it is aligned for movement
`along the second optical axis. Id. at 26–27 (citing Ex. 1004, Fig. 4, ¶¶ 39,
`49, 59). Petitioner assets Fujinawa also discloses a lens (lens 29) supported
`by a carriage, which is positioned between the area sensor (sensor 29) and
`fold mirror (reflective mirror 30). Id. at 28. Petitioner asserts that in
`Fujinawa the lens (lens 29) and area sensor (sensor 28) are both located on
`the first lateral side of the first lead member and the first drive mechanism,
`as illustrated in the annotated version of Figure 4. Id. at 28–29 (citing Ex.
`1004, Fig. 4). Petitioner also asserts that Kokubo discloses a lens and area
`sensor located on a first lateral side of the first lead member and a first
`lateral side of the first drive mechanism. Id. at 29–30 (citing Ex. 1005, Fig.
`1, 8:61–64).
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`Patent Owner contends the prior art does not disclose the use of a belt
`system to move carriages containing optical elements, or the optical
`elements themselves, along an optical path for focusing an image. PO Resp.
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`9. Patent Owner argues Fujinawa does not disclose “a first drive mechanism
`. . . extending alongside and spaced apart from the first lead member” and
`the “lens and area sensor are located on a first lateral side of the first drive
`mechanism.” Id. Patent Owner asserts Fujinawa teaches the sensor and lens
`are moved along the optical path using threaded worms and Kokubo
`discloses a flatbed scanner that moves the reading unit 6 and its components
`as a whole and does not move the lens relative to the sensor. Id. at 10–11.
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`Patent Owner argues Petitioner’s proposed modification of Fujinawa
`in light of Kokubo is not a simple substitution because the substituted
`components would not be performing the same function that was disclosed
`in the prior art, namely moving elements critical to optical focusing. Id. at
`12–13. In particular, Patent Owner asserts the function of Fujinawa’s
`threaded worms is to precisely position a lens relative to an image sensor
`and that any components substituted for the threaded worm must also be
`able to perform that function. Id. at 14–15. Patent Owner argues, with
`support from testimony of Dr. Ellis, that the function of the worms in
`Fujinawa is fundamentally different from the function of the belt and pulley
`system of Kokubo and that the belt/pulley system of Kokubo does not need
`the same precision as the worms in Fujinawa because the image is already in
`focus when the belt and pulley system moves the reading unit. Id. at 16
`(citing Ex. 2007, 23:10–19; Ex. 2005 ¶¶ 30, 37). Patent Owner further
`argues that the device resulting from the proposed combination would not
`have worked for its intended purpose because smooth timing belts like those
`disclosed in Kokubo are prone to slipping, which would not allow for
`movement sufficiently precise to focus an image. See id. at 20–22.
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`Additionally, Patent Owner contends Kokubo teaches away from the
`proposed combination. Id. at 22–27. Patent Owner argues Kokubo
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`discourages the use of the prior art system depicted in Figure 49, which uses
`a wire rope and drive pulley system to move the lens relative to the sensor,
`because it states that if the drive pulleys and wire ropes in the system should
`slip, an error occurs in the displacement amount, which would give rise to
`distortion in the image reading by the line sensor. Id. at 24–26 (citing
`Ex. 1005, 2:48–56). Patent Owner asserts that Kokubo teaches its device
`depicted in Figures 14–16 overcomes the deficiencies of the prior art
`because optical parts can be moved with high precision and distortion of the
`image read is consequentially prevented. Id. at 26–27 (citing Ex. 1005,
`13:55–61). Patent Owner argues these teachings would have discouraged
`one of skill in the art from making the combination proposed by Petitioner.
`Id. at 27.
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`Petitioner replies the function of the drive mechanism in the claims is
`not to provide precision focusing, but to move the carriage. Reply 3–4.
`Petitioner argues Kokubo is relied upon as disclosing a type of drive
`mechanism and that the combination of Fujinawa and Kokubo discloses the
`use of a belt and pulley to move a lens and sensor along an optical path. Id.
`at 14. Petitioner argues that there are a finite number of ways to translate
`movement and reiterates its assertion that the replacement of one known
`drive mechanism for another is nothing more than a simple substitution that
`yields predictable results. Id. at 12.
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`Petitioner further argues that even if the claims require a level of
`precise movement only achieved by using a toothed belt, Kokubo’s teaching
`of a timing belt would be understood by those of skill in the art to be a
`toothed belt capable of precise movement. See id. at 4–7 (citing Ex. 2007,
`18:24–19:4; Ex. 1012, 9:25–10:2, 32:3–33:9; Ex. 1011, 755). Petitioner
`asserts that Patent Owner’s expert acknowledges a toothed belt, as opposed
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`to a smooth belt, is capable of providing the precise movement it alleges is
`required by the claims. Id. at 3 n.1 (citing Ex. 1012, 20:2–17). Petitioner
`additionally argues that, even assuming Kokubo’s belt is smooth, Mr. Senn
`testified that a control system could capture any errors that might arise from
`the use of smooth belts if designed to do so and would not prevent precision
`focusing. See id. at 8 (citing Ex. 2007, 20:8–12). Petitioner argues that
`Kokubo does not discourage the use of a belt, but rather discourages the use
`of an un-guided wire rope system as opposed to the use of a timing belt and
`guide rail. See id. at 9.
`
`We have reviewed Petitioner’s and Patent Owner’s analyses and the
`supporting evidence and find Petitioner establishes, by a preponderance of
`the evidence, that the combination of Fujinawa and Kokubo teaches the first
`drive mechanism limitation set forth in claim 1. See Pet. 21–25. We agree
`with Petitioner that Fujinawa discloses a drive mechanism through its
`description of a worm that supports sensor 28 and couples the sensor to the
`rotating shaft 26 of reading motor. See Ex. 1004, Fig. 4, ¶ 59. We also
`agree Kokubo discloses a drive mechanism (timing belt 10 and pulleys 8, 9),
`which moves reading unit in direction A or B along rail 5. See Ex. 1005,
`Fig. 1, 9:11–17. We agree with Petitioner that when the guide rail and belt
`disclosed by Kokubo is substituted for the worm of Fujinawa, the drive
`mechanism is extending alongside and spaced apart from the first lead
`member (rail 5). Patent Owner’s arguments that neither reference
`individually discloses the use of a belt system to move carriages containing
`optical elements (PO Resp. 9–11) and that Fujinawa does not disclose a first
`drive mechanism “extending alongside and spaced apart from the first lead
`member” (id. at 9) are not persuasive because Petitioner relies on the
`combined teachings of the references to meet these limitations. See In re
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`Keller, 642 F.2d 413, 426 (CCPA 1981). We address Petitioner’s reason to
`combine the references below.
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`Petitioner also persuades us that the Fujinawa-Kokubo combination
`discloses the area sensor and lens limitations. Figure 4 of Fujinawa depicts a
`line sensor 28, supported by a carriage, and aligned with a horizontal axis
`(second optical axis) for movement along the axis, which adjusts the
`distance between the sensor and mirror 30. Ex. 1004, Fig. 4; see also id.
`¶ 59 (describing sensor 28 is moved in accordance with the rotation of
`rotating shaft). Fujinawa also describes an area sensor can be used instead
`of line sensor 28. Id. ¶ 59. Figure 4 additionally depicts a lens supported by
`the chassis along the second optical axis (horizontal axis), which is
`positioned between sensor 28 and fold mirror 30. Id. at Fig. 4. Thus, we
`agree with Petitioner that Fujinawa discloses the area sensor and lens sensor
`limitations of claim 1. We disagree with Patent Owner’s conclusory
`assertion (PO Resp. 9) that Fujinawa does not discloses the lens and area
`sensor are located as set forth in claim 1. Rather, we agree with Petitioner
`(Pet. 28–29) that Fujinawa discloses that both components are on a first
`lateral side of the worm (lead member) and drive mechanism. See Ex. 1004,
`Fig. 4. We also agree with Petitioner that Kokubo discloses that lens and
`line sensor mounted on reading unit 6 are located on a first lateral side of the
`first lead member (guide rail 5) and a first lateral side of its drive
`mechanism. See Ex. 1005, Fig. 1, 8:61–64. Accordingly, we are persuaded
`that the proposed Fujinawa-Kokubo combination discloses the lens and area
`sensor “are located on a first lateral side of the first lead member and located
`on a first lateral side of the first drive mechanism.”
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`We have also considered Petitioner’s rationale for why one of
`ordinary skill in the art would have been motivated to combine Fujinawa and
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`Kokubo. Petitioner persuades us that replacing the worm drive mechanism
`disclosed by Fujinawa with the guide rail and belt/pulley configuration
`disclosed by Kokubo would have been a simple substitution of one known
`drive mechanism for another that yields predictable results. See Pet. 23–25;
`Reply 12. We credit the testimony of Mr. Senn that the proposed
`combination “would have been a simple substitution of the motor shaft
`mechanism of Fujinawa for the rod and belt configuration of Kokubo to
`obtain a predictable result, i.e., translation of rotational movement from the
`motor to linear movement of the carriage to enable the carriage to move
`along a lead member.” Ex. 1002 ¶ 102. Mr. Senn further testifies that
`“[t]here are a finite quite short list, means of converting rotary motion to
`linear motion.” Ex. 2007, 56:15–16. We determine Petitioner articulates
`sufficient reasoning for the proposed combination to support the legal
`conclusion of obviousness. See KSR, 550 U.S. at 398, 417–18.
`
`We are not persuaded by Patent Owner’s arguments that the
`components would not be performing the same function. As noted by
`Petitioner, the claimed functionality is to cause the first carriage “to move
`along the first lead member” and not “precision focusing.” See Reply 3–4.
`We determine that the functionality of both Fujinawa’s threaded worm and
`Kokubo’s rail/belt system is the same—namely a drive mechanism to move
`the carriage. We are not persuaded that replacing the drive mechanism
`taught by Fujinawa with the drive mechanism taught by Kokubo would have
`been more than a simple substitution (as testified by Mr. Senn (Ex. 1002
`¶ 102)) or would otherwise have been challenging or difficult for one of
`ordinary skill in the art.
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`We are also not persuaded that the combination would not have
`worked for the intended purpose, which is asserted by Patent Owner to be to
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