`
` Inter Partes Review
`United States Patent No. 9,079,464
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 
`
`United States Patent No.: 9,079,464
`Inventors: Timothy Scott Onello, et al.
`Formerly Application No. 13/301,359
`Issue Date: July 14, 2015
`Filing Date: November 21, 2011
`Former Group Art Unit: 3727
`Former Examiner: Lee D. Wilson
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`
`Attorney Docket No.: OTI/0098
`Customer No.: 26290
`Petitioner: Olympia Tools
`International, Inc.
`
`
`
`
`For: PORTABLE WORK HOLDING DEVICE AND ASSEMBLY
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 9,079,464
`
`
` 
`
`
`
` 
`
`

`

`
`
` Inter Partes Review
`United States Patent No. 9,079,464
`
` 
`
`V. 
`
`TABLE OF CONTENTS
`INTRODUCTION AND BACKGROUND IN THE ART ............................. 1 
`I. 
`II.  MANDATORY NOTICES UNDER §42.8 .................................................... 2 
`III. 
`PETITIONER HAS STANDING .................................................................... 3 
`IV.  SUMMARY OF THE ’464 PATENT AND ITS FILE HISTORY ................ 4 
`A.  Overview Of the ’464 patent ................................................................. 4 
`B. 
`Overview Of the Prosecution History ................................................... 7 
`THERE IS A REASONABLE LIKELIHOOD PETITIONER WILL
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM ......................... 9 
`A. 
`Claim Construction Under §42.104(b)(3) ............................................. 9 
`B. 
`Level of Ordinary Skill And State Of the Art ..................................... 12 
`C. 
`Grounds 1-6 ......................................................................................... 13 
`1. 
`U.S. Publication 2010/00772240 (“Cornes”) ........................... 13 
`2. 
`U.S. Patent 742,096 (“Long”) ................................................... 14 
`3. 
`U.S. Patent 2,841,035 (“Simpson”) .......................................... 15 
`4. 
`U.S. Publication 2005/0082730 (“Murray”) ............................. 16 
`5.  Motivation to Combine Cornes And Long (Claims 1, 3, 5-8,
`22, 24, and 25) ........................................................................... 17 
`6.  Motivation to Combine Cornes And Either Long or Murray
`(Claim 23) ................................................................................. 18 
`7.  Motivation to Combine Cornes, Long, And Simpson
`(Claim 12) ................................................................................. 19 
`8.  Motivation to Combine Cornes, Long, And Murray
`(Claim 21) ................................................................................. 21 
`Overview of Invalidity .............................................................. 22 
`9. 
`10.  Claim Charts For Grounds 1-6 .................................................. 27 
`a. 
`Ground 1: Claim 1, 3, 5-8, and 22-25 Are Anticipated
`by Cornes ........................................................................ 27 
`
` 
`
`i
`
`

`

`
` 
`
`
`
`
`
`b. 
`c. 
`
`d. 
`
`Ground 2: Claim 23 Is Obvious In View Of Cornes ..... 48 
`Ground 3: Claim 23 Is Obvious In view Of Cornes
`and Either Long Or Murray ............................................ 49 
`Ground 4: Claims 1, 3, 5-8, 22, 24, And 25 Are
`Obvious In View Of Cornes And Long .......................... 51 
`Ground 5: Claim 12 Is Obvious In View Cornes,
`Long, And Simpson ........................................................ 56 
`Ground 6: Claim 21 Is Obvious In View Of Cornes,
`Long, And Murray .......................................................... 56 
`VI.  CONCLUSION .............................................................................................. 58 
`
`
`e. 
`
`f. 
`
`
`
` 
`
`
`
`ii
`
`

`

`
` 
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Amgen Inc. v. F. Hoffman-La Roche Ltd.,
` 580 F.3d 1340 (Fed. Cir. 2009) ............................................................................ 11
`In re Thorpe,
` 777 F.2d 695 (Fed. Cir. 1985); ............................................................................. 11
`JPW Industries, Inc., v. Olympia Tools International, Inc
` Nos. 2:17-cv-07415, 3:16-cv-03153. ...................................................................... 2
`
`STATUTES
`35 U.S.C.
`§102 ............................................................................................................ 1, 2, 3, 9
`§102(a) ............................................................................................... 13, 15, 16, 17
`§102(b) .......................................................................................................... passim
`§102(e) ............................................................................................... 13, 15, 16, 17
`§103 ............................................................................................................ 1, 2, 3, 9
`§112 ....................................................................................................................... 13
`§314(a) .................................................................................................................... 9
`§311-319 ................................................................................................................. 1
`
`
`OTHER AUTHORITIES
`37 C.F.R
`§1.33(c) ................................................................................................................. 45
`§42.1 ........................................................................................................................ 1
`§42.100 .................................................................................................................. 45
`§42.104(a) ............................................................................................................... 3
`§42.104(b) ............................................................................................................... 3
`§42.104(b)(3) ........................................................................................................ 10
`§42.105 .................................................................................................................. 45
`§42.22 ...................................................................................................................... 3
`§42.24(a)(1) ............................................................................................................ 1
`§42.24(d) ................................................................................................................. 1
`§42.8 ........................................................................................................................ 2 
`
` 
`
`iii
`
`

`

`
` 
`
`Exhibit
`
`EX1001
`EX1002
`EX1003
`
`EX1004
`
`EX1005
`
`EX1006
`EX1007
`EX1008
`EX1009
`
`
`
`
` 
`
`
`
`
`
`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 9,079,464
`File History of U.S. Patent No. 9,079,464
`Declaration of Michael O’Banion In Support of
`Petition for Inter Partes Review of U.S. Patent No.
`9,079,464
`JPW’s Responsive Claim Construction Brief, filed on
`July 14, 2017
`District Court Order Following Claim Construction
`Hearing, issued on October 5, 2017
`U.S. Patent Publication No. 2010/00772240
`U.S. Patent No. 742,096
`U.S. Patent No. 2,841,035
`U.S. Patent Publication No. 2005/0082730
`
`iv
`
`

`

`
`
` Inter Partes Review
`United States Patent No. 9,079,464
`
`Pursuant to §§311-319 and §42.1,1 the undersigned, on behalf of and in a
`
` 
`
`
`representative capacity for Olympia Tools International, Inc. (“Petitioner”),
`
`petitions for inter partes review (“IPR”) of Claims 1, 3, 5-8, 12, and 21-25
`
`(“Claims”) of U.S. Patent No. 9,079,464 (“the ’464 patent”), issued to Timothy
`
`Scott Onello et al., according to USPTO records, now assigned to JPW Industries,
`
`Inc. (“Patent Owner”). Petitioner asserts there is a reasonable likelihood that at
`
`least one of the Claims is unpatentable for the reasons herein and respectfully
`
`requests review of, and judgment against, these claims as unpatentable under §102
`
`or §103.
`
`I.
`
`
`
`INTRODUCTION AND BACKGROUND IN THE ART
`
`The ’464 patent generally relates to a portable work holding device such as a
`
`vise. The work holding device includes a fixed or stationary jaw piece and a
`
`movable jaw piece. EX1001, 2:42-56. As shown herein, the supposed “invention”
`
`in the Claims was well-known and obvious prior to the filing date of November 21,
`
`2011. Specifically, the Claims recite conventional features that were disclosed or
`
`made obvious in printed publications before, at least, November 21, 20102.
`
`
`
`As demonstrated herein, each and every element of the Claims has been
`
`disclosed or taught in the prior art, and the Claims of the ’464 patent are at most,
`
`                                                            
`1 Section cites are to 35 U.S.C or 35 C.F.R. as the context indicates; and all emphasis and annotations are added
`unless noted.
`2 Petitioner reserves the right to raise, in an appropriate forum, invalidity based on § 112.   
`
` 
`
`1
`
`

`

`
` 
`nothing more than a routine and predictable combination of these well-known
`
`
`
`
`
`elements and steps. Thus, Petitioner respectfully requests that the Board institute
`
`trial and find each Claim invalid under §102 or §103.
`
`II. MANDATORY NOTICES UNDER §42.8
`
`
`
`Olympia Tools International, Inc. is the Real Party in Interest Under
`
`§42.8(b)(1).
`
`
`
`Related Matters Under §42.8(b)(2): Patent Owner is currently asserting
`
`claims 1, 3, 5-8, 12, and 21-25 of the ’464 patent against Petitioner in JPW
`
`Industries, Inc., v. Olympia Tools International, Inc., United States District Court,
`
`Central District of California, No. 2:17-cv-07415 (transferred from United States
`
`District Court, Middle District of Tennessee, No. 3:16-cv-03153) (collectively, the
`
`“Related Litigation”).
`
`
`
`Lead and Back-Up Counsel for Petitioner Under §42.8(b)(3) and Service
`
`Information under §42.8(b)(4): B. Todd Patterson (Lead Counsel), Reg. No.
`
`37,906,
`
`tpatterson@pattersonsheridan.com, P; 713-713-4801/F:713-623-4846;
`
`Jerry
`
`R.
`
`Selinger
`
`(Backup
`
`Counsel),
`
`Reg.
`
`No.
`
`26,582,
`
`jseleinger@pattersonsheridan.com, P: 214-272-0957/F: 713-623-4846; Mailing
`
`address for all PTAB correspondence: Patterson + Sheridan LLP, 24 Greenway
`
`Plaza, Suite 1600, Houston, Texas, 77046.
`
`
`
` 
`
`2
`
`

`

`
` 
`III. PETITIONER HAS STANDING
`
`
`
`
`
`
`
`Under §42.104(a), Petitioner certifies that the ’464 patent is eligible for IPR
`
`and Petitioner is not barred/estopped from requested IPR. Petitioner accepted
`
`service of a complaint instituting the Related Litigation on February 3, 2017.
`
`Neither Petitioner or any other real part-in-interest or privy of Petitioner was
`
`served with any other complaint relative to the ’464 patent before that date, or has
`
`initiated a civil action challenging the ’464 patent’s validity.
`
`
`
`Claims/Statutory Grounds Under §§ 42.22, 42.104(b): Petitioner requests
`
`IPR of claims 1, 3, 5-8, 12, and 21-25 and asserts that the Claims are unpatentable
`
`based on one or more grounds under §102 or §103: Ground 1: claims 1, 3, 5-8,
`
`and 22-25 are anticipated by Cornes; Ground 2: claim 23 is obvious in view of
`
`Cornes; Ground 3: claim 23 is obvious in view of Cornes and either Long or
`
`Murray; Ground 4: claims 1, 3, 5-8, 22, 24, and 25 are obvious in view of Cornes
`
`and Long; Ground 5: claim 12 is obvious in view of Cornes, Long, and Simpson;
`
`and Ground 6: claim 21 is obvious in view of Cornes, Long, and Murray.
`
`
`
`Section V.C.10 provides claim charts specifying how the relied upon prior
`
`art anticipates or renders obvious the Claims. In further support of the proposed
`
`grounds of rejection, the Declaration of technical expert, Mr. Michael O’Banion, is
`
`attached as EX1003. See EX1003 ¶¶1-246.
`
`
`
` 
`
`3
`
`

`

`
` 
`IV. SUMMARY OF THE ’464 PATENT AND ITS FILE HISTORY
`
`
`
`
`
`A. Overview Of the ’464 patent
`
`
`
`The ’464 patent generally describes a “Portable Work Holding Device and
`
`Assembly.” EX1001, Title. The ’464 patent’s supposed “invention” is described
`
`as a portable work holding device 10 , such as a vise, configured to removeably
`
`mount to a support. Id., 1:7-9. As an example, the work holding device 10 is
`
`capable of being quickly mounted to a vehicle using the vehicle receive hitch as a
`
`connection point. Id., 43-45. The work holding device 10 can also be mounted to
`
`a bracket that is fixed to a suitable support surface, such as a table or a work bench.
`
`Id., 2:45-47. Figures 1 and 2 illustrate an example work holding device 10
`
`according to an embodiment of the present invention. Id., 3:1-5.
`
`
`
` 
`
`4
`
`

`

`
` 
`
`
`
`
`
`
`
`
`
`As shown in Figure 1, the work holding device 10 includes a stationary first
`
`jaw piece 12 having a casting 14 and an elongated first connection member 16
`
`extending from a first end of the casting 14 for connecting the work holding device
`
`10 to a support (illustrated in Figures 7 and 8). Id., 3:14-19.
`
`
`
`The work holding device 10 also includes a moveable second jaw piece 30.
`
`The second jaw piece 30 includes an elongated second connection member 32
`
`extending from a first end of the second jaw piece 30. Id., 3:37-39.
`
`
`
`As illustrated in Figure 2, the first connection member 16 defines a first
`
`passage 20 and the second connection member 32 defines a second passage 34.
`
`Id., 3:19-20, 41-43. The second connection member 32 is positionable within the
`
`first passage 20 to couple the second jaw piece 30 to the first jaw piece 32. Id.,
`
`3:39-41. The second passage 34 is in communication with the first passage 20
`
`when the second connection member 32 is positioned within the first passage 20.
`
`Id., 3:44-46.
`
` 
`
`5
`
`

`

`
` 
`
`
`
`
`
`
`In an embodiment, the work holding device includes a spindle assembly 40
`
`movably connecting the second jaw piece 30 to the first jaw piece 12. Id., 3:52-54.
`
`The spindle assembly 40 is configured to move the second jaw piece 30 with
`
`respect to the first jaw piece 12 to create a clamping pressure on an object placed
`
`between the first jaw piece 12 and the second jaw piece 30. Id., 3:54-57. The
`
`spindle assembly 40 includes a spindle nut 42 positioned within at least the first
`
`passage 20. Id., 3:65-66. When the second connection member 32 is positioned
`
`within the first connection member 16, the spindle nut 42 extends through the first
`
`passage 20 and into the second passage 34, as shown in Figure 2. Id., 3:66-4:2.
`
`The spindle assembly 40 also includes a spindle 52 operatively coupled to the
`
`spindle nut 42. Id., 4:6-7.
`
`
`
`The work holding device 10 includes a handle 80 operatively coupled to the
`
`spindle 52. Id., 4:47-50. The handle 80 may be fixed in a locked position to
`
`protect the handle 80 from undesirable contact and/or damage, such as during
`
`vehicle driving. Id., 4:52-57.
`
`
`
`In one embodiment, as shown in Figure 2, the first jaw piece 12 defines a
`
`cored-out back section 104 that provides a handle feature for easily moving,
`
`transporting, and mounting the portable work holding device. Id., 5:36-39.
`
`
`
`The Claims of the ’464 patent include nothing but components or steps for
`
`assembly that were well-known in the art being used for their ordinary purpose to
`
` 
`
`6
`
`

`

`
` 
`obtain expected results. As detailed herein, the inventors did not “invent” anything
`
`
`
`
`
`beyond what was already well-known and understood in the art at the time of
`
`filing.
`
`B. Overview Of the Prosecution History
`
`
`
`The application leading to the ’464 patent (Application No. 13/301,359) was
`
`filed on November 21, 2011 including claims 1-25. EX1002, 74-110. On
`
`November 26, 2014, the Examiner issued a Non-Final Rejection rejecting claims 1-
`
`25 under pre-AIA §102(b) as being anticipated by Gasparyan and claim 23 under
`
`pre-AIA §102(b) as being anticipated by Yang. Id., 58-69.
`
`
`
`On February 26, 2015, Applicant filed a response to the Non-Final Office
`
`Action. Id., 45-55. In the response, Applicant stated that the “movable jaw of
`
`Gasparyan has the channel 50 with an internal space, but that internal space is not
`
`open to the passage within the elongated member of the fixed jaw as claimed.” Id.
`
`To further define the claimed invention, Applicant amended the claim 1 to
`
`“provide that the passage of the movable jaw is open at the second end to the
`
`passage of the fixed jaw.” Id. Applicant further stated that in “claim 1, the first
`
`connection member is generally square elongated tube and the second jaw has a
`
`second elongated connection member within the first elongated connection
`
`member.” Id. Applicant asserted that this construction is not found in the cited art.
`
`Further, Applicant asserted that the cited art fails to show “that the square
`
` 
`
`7
`
`

`

`
` 
`elongated tube is shaped for mounting in a receiver hitch of a vehicle” or “the
`
`
`
`
`
`second end of the second connection member is in communication with the first
`
`passage in the first connection member.” Id.
`
`
`
`Regarding claim 5, Applicant asserted that the art fails to disclose the first
`
`connection member including “a pin receiving opening configured to receive a pin
`
`to secure the work hold device in a vehicle receiver hitch.” Id.
`
`
`
`Regarding claim 8, Applicant asserted that the art fails to disclose “the first
`
`connection member is shaped to fit into and be supported in a receiver hitch of a
`
`vehicle.” Id.
`
`
`
`Regarding claim 21, Applicant asserted that the art fails to disclose “a
`
`centered handle.” Id.
`
`
`
`Regarding claim 23, Applicant asserted that Gasparyan and Yang failed to
`
`show “the elongated connection member including a generally square elongated
`
`tube that is shaped and configured to fit into a receiver hitch of a vehicle.” Id.
`
`
`
`Regarding claim 24, Applicant asserted that the cited reference fails to show
`
`“the second passage of the second connection member is in communication with
`
`the first passage at the second end of the connection member.” Id.
`
`
`
`On April 28, 2015, the Examiner mailed a Notice of Allowance. Id., 36-40.
`
`On May 22, 2015, Applicant filed an Amendment after Notice of Allowance (Rule
`
`312). Id., 10-33. The Amendment after Notice of Allowance amended the
`
` 
`
`8
`
`

`

`
` 
`specification and claims. The specification was amended to refer to “vise” instead
`
`
`
`
`
`of “vice.” Id. Claims 16 and 17 (not at issue in this Petition) were amended to
`
`change “first end” of the spindle to “second end,” so that claims 16 and 17 were
`
`consistent with claim 9.
`
`
`
`On June 9, 2015, the Examiner entered the amendment filed on May 22,
`
`2015. Id., 7-9. The ’464 patent issued on July 14, 2015. Id., 1.
`
`V. THERE IS A REASONABLE LIKELIHOOD PETITIONER WILL
`
`PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM
`
`
`
`Petitioner submits there is at least a reasonable likelihood Petitioner will
`
`prevail with respect to at least one of claims 1, 3, 5-8, 12, and 21-25. §314(a)
`
`Indeed, as explained herein, each of claims 1, 3, 5-8, 12, and 21-25 is either
`
`anticipated under §102 or obvious under §103.
`
`A. Claim Construction Under §42.104(b)(3)
`
`
`
`The Petitioner construes the ’464 claims under the broadest reasonable
`
`interpretation (“BRI”) for purposes of this Petition. Evidence of the BRI for
`
`certain claim terms can be found in the Markman proceedings in the Related
`
`Litigation. See EX1004 (JPW Responsive Claim Construction Brief, “Patent
`
`Owner Statement”) and EX1005 (District Court Order Following Claim
`
`Construction Hearing, “Markman Order”). Petitioner submits that the BRI of five
`
`terms is at least as broad as the district court’s construction.
`
` 
`
`9
`
`

`

`
` 
`
`
`
`
`
`
`Further, Petitioner submits that the BRI of two additional terms are
`
`significantly broader than the district court’s construction, as evidenced by the
`
`Patent Owner Statement filed during the Markman proceedings.
`
`
`
`For purposes of this review, Petitioner adopts the claim constructions as set
`
`forth below, in accordance with the district court’s Markman Order, Patent Owner
`
`Statement, or MPEP 2113.
`
` “the second passage being in communication with the first passage
`at the second end of the second connection member” (Claim 1):
`Based, at least on the Markman Order, this phrase should be construed
`to mean “the second passage open to the first passage at the second
`end of the second connection member.” See EX1005, 10-12.
`
` “a recess defined within the first jaw piece forming a handle”
`(Claim 3): Based, at least on the Markman Order, the term “forming a
`handle” is a non-limiting intended use. See EX1005, 12-13.
`
` “the second connection member defining a second passage in
`communication with the first passage with the second connection
`member positioned within the first passage” (Claim 8): Based, at
`least on the Markman Order, this phrase should be construed as “the
`second connection member defining a second passage open to the first
`passage with the second connection member positioned within the
`first passage.” See EX1005, 10-12.
`
` “casting” (Claims 8, 24): The BRI of “casting” refers to a structure
`and is not limited to any particular method of manufacture. MPEP
`2113 (explaining that a claim is invalid if anticipated or obvious from
`prior art products, even if those prior art products are made by
`different processes, and citing In re Thorpe, 777 F.2d 695, 698 (Fed.
`Cir. 1985); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340,
`1370 n.14 (Fed. Cir. 2009)). Specifically, the ’464 patent
`specification describes casting 14 and the first elongated connection
`member 16 as the components of first jaw piece 12. However,
`
` 
`
`10
`
`

`

`
`
`
`
`nothing in the specification mentions how to fasten casting 14 to the
`first elongated connection member 16, nor does it mention any casting
`(or any other) process for forming casting 14. Accordingly, under the
`BRI, the “casting” is not limited to any particular method of
`manufacture, and should be construed as “a portion of the stationary
`first jaw piece from which the elongated first connection member
`extends, without limitation as to method of manufacture.” See
`EX1010 and EX1001, 3:16-17 and Figure 2.
`
` “a handle coupled to the spindle and configured to be fixed in a
`locked position” (Claim 12): Based, at least on the Patent Owner
`Statement, this phrase should be construed as “a handle that is
`attached to the spindle, whether rotationally fixed or not, and that
`locks in place, not limited to the disclosed embodiment or any
`particular locking mechanism.” See EX1004, 16-18 (numbered pages
`12-14).
`
` “first jaw piece defines a cored-out back section to reduce weight
`and provide a handle to facilitate moving the work holding device,
`the cored-out back section being centered on the first jaw piece”
`(Claim 21): Based, at least on the Markman Order, the term “provide
`a handle to facilitate moving the work holding piece” is a non-limiting
`intended use.” See EX1005, 15-16.
`
` “a member including a plurality of walls defining a passage
`having a complementary cross-section to receive the elongated
`connection member” (Claim 23): Based, at least on the Patent Owner
`Statement, this phrase should be construed as “the member need only
`have more than one wall, and encompasses open non-square shapes.”
`See EX1004, 18-19 (numbered pages 14-15).
`
` “the second passage being in communication with the first passage
`at the second end of the second connection member” (Claim 24):
`Based, at least on the Markman Order, this phrase should be construed
`as “the second passage open to the first passage at the second end of
`the second connection member.” See EX1005, 10-12.
`
`
`11
`
`
` 
`
` 
`
`

`

`
` 
`
`
`
`
`
`
`For purposes of this review, Petitioner interprets any remaining terms
`
`according to their BRI consistent with the ’464 specification.
`
`
`
`Petitioner expressly reserves the right to argue in litigation a different claim
`
`construction for any term, as appropriate to that proceeding and forum. Petitioner
`
`further expressly reserves the right to argue in litigation that the claims are invalid
`
`under any other sections of Title 35 of the U.S. Code, particularly to the extent
`
`such grounds cannot be raised in IPR proceedings, as with, for example, invalidity
`
`under 35 U.S.C. §112, ¶¶ 1 or 2.
`
`B. Level of Ordinary Skill And State Of the Art
`
`
`
`The level of ordinary skill in the art of the ’464 patent is a person having a
`
`minimum of a bachelor’s degree in mechanical engineering, manufacturing design,
`
`or a related field and approximately two years of professional experience with
`
`tooling design, use, or manufacturing. Additional education could substitute for
`
`professional experience, or significant experience in the field could substitute for
`
`formal education. The level of ordinary skill may be lower than stated above,
`
`although Petitioner does not believe that the higher level stated above effects the
`
`analysis herein. A POSITA is presumed to have knowledge of all relevant prior
`
`art, and would thus have been familiar with each of the references cited herein, as
`
`well as the background knowledge in the art discussed in §1, supra and the full
`
`range of teachings they contain. EX1003 ¶¶ 13-18.
`
` 
`
`12
`
`

`

`
` 
`
`C. Grounds 1-6
`
`
`
`
`
`As set forth below, the Claims are unpatentable based on one or more grounds
`
`under §102 or §103 and prior art that was not previously considered during
`
`prosecution. See EX1003 ¶¶64-246)
`
`1. U.S. Publication 2010/00772240 (“Cornes”)
`
`
`
`Cornes, (EX1006) filed September 20, 2008, published on March 25, 2010,
`
`is prior art under at least 102 (a), (b), and (e). Cornes discloses a trailer hitch
`
`mounted vise which comprises a vise body, a trailer hitch insert beam which slides
`
`into a trailer hitch receive on the back of a vehicle, and an adjustment nut driver.
`
`Id., ¶ [0020]. Figure 1 illustrates a perspective view of the vehicle mounted vise
`
`showing the movable vise jaw attached to the stationary vise jaw. Id., ¶ [0024].
`
`
`
`
`
`Cornes discloses a vise device 10 including a stationary vise jaw 30 and a
`
`movable vise jaw 20. Id., ¶ [0031]. The movable vise jaw 30 is adjustably
`
`connected to the stationary vise jaw 30 for holding items therebetween. Id., ¶
`
`[0038]. The movable vise jaw 20 moves toward and away from the stationary vise
`
` 
`
`13
`
`

`

`
` 
`jaw 30 as indicated by the two headed arrow in Figure 1. Id., ¶ [0032]. The
`
`
`
`
`
`stationary vise jaw 30 comprises an elongated square vise insertion tube 36. Id., ¶
`
`[0033]. The stationary vise jaw 30 further comprises a stationary jaw 32 welded
`
`on top of a receiving sleeve 33. Id., ¶ [0034].
`
`
`
`A rigid guide post 26, which is also referred to as an insertion beam 26,
`
`extends from an inner face of the movable vise jaw 20 fitting slidably within the
`
`receiving sleeve 33 of the stationary vise jaw 30. Id., ¶¶ [0035], [0038].
`
`
`
`The receiving sleeve 33 has an outer receiving opening in the outer face of
`
`the stationary jaw and an outer threaded stationary shaft 51 inside the receiving
`
`sleeve 33. Id., ¶ [0035]. The movable vise jaw 20 has an inner threaded tubular
`
`member 40 controlled by a universal nut driver 41. Id.
`
`
`
`The insertion beam 26 is welded to the inner portion of the movable jaw
`
`support 23 and an end plate 48 (illustrated in Figure 5) welded to the exposed end
`
`of the insertion beam 26. Id., ¶ [0038]. The end plate 48 has a center opening to
`
`receive the stationary threaded shaft 51 of the stationary vise jaw 30. Id.
`
`2. U.S. Patent 742,096 (“Long”)
`
`
`
`Long (EX1007), patented on October 20, 1903, is prior art under at least
`
`§102 (a), (b), and (e). Long teaches a bench vise having a fixed jaw member C and
`
`a movable jaw member D. Id. 1:43-51. As illustrated in Figure 2 (annotated
`
`version reproduced below), the fixed jaw member C has a first elongated
`
` 
`
`14
`
`

`

`
` 
`connection member and the movable jaw member D has a second elongated
`
`
`
`
`
`connection member. The first elongated connection member fits inside the second
`
`elongated connection member. The first elongated connection member has an
`
`opening to allow passage of a screw G through the first and second elongated
`
`connection members.
`
`3. U.S. Patent 2,841,035 (“Simpson”)
`
`
`
`
`
`Simpson (EX1008), patented on May 13, 1955, is prior art under at least
`
`§102 (a), (b), and (e). Simpson teaches that many of the tools and machines used
`
`in machine shops have adjustment requiring the manual rotation of a shaft. Id.,
`
`1:22-24. Figures 4 and 5 illustrate an example spring grip which is well adapted
`
`for use with small, light handle assemblies. Id., 4:5-14. The grip-spring includes
`
`elastically deformable hooks 1’ and 2’, having oppositely directed free ends 1’a
`
`and 2’a and connecting spring wire means 3. Id., 4:15-17. In Figure 4, the handle
`
` 
`
`15
`
`

`

`
` 
`bar is in symmetrical position and in Figure 5, the handle bar has been forcible
`
`
`
`
`
`moved to an extreme position in which one of the end-stops F’ is nearly against the
`
`shaft. Id., 4: 21-25. The handle bar can be maintained against the force of its own
`
`weight in such a position, even under conditions of vibrations with either of the
`
`illustrated grip-springs. Id., 4: 30-35. Therefore, Simpson teaches selective
`
`locking of the handle bar E’.
`
`4. U.S. Publication 2005/0082730 (“Murray”)
`
`
`
`
`
`Murray (EX1009), published on October 18, 2004, is prior art under at least
`
`§102 (a), (b), and (e). Murray teaches work holding devices (specifically, clamps)
`
`for high quality, durable, and lightweight building tools. Id., ¶ [0001]. Figure 2A,
`
`reproduced below, illustrates an example “F” style clamp. The first jaw 205 has a
`
`void area 207A and the second jaw 210 has a void area 207B to reduce weight of
`
`the jaws. Id., ¶ [0019].
`
` 
`
`16
`
`

`

`
` 
`
`
`
`
`
`
`
`5. Motivation to Combine Cornes And Long (Claims 1, 3, 5-8,
`
`22, 24, and 25)
`
`
`
`A POSITA would have been motivated to combine and found it obvious and
`
`straightforward to use the teachings of Long in combination with the teachings of
`
`Cornes.
`
`
`
`To the extent that Cornes does not expressly or inherently disclose “the
`
`second passage being in communication with the first passage at the second end of
`
`the second connection member” as recited in claim 1, “the second connection
`
`member defining a second passage in communication with the first passage with
`
`the second connection member positioned within the first passage” as recited in
`
`claim 8, or “the second passage being in communication with the first passage at
`
`the second end of the second connection member” as recited in claim 24, these
`
`claims are obvious because Long teaches such features. EX1003 ¶¶ 204, 213, 220.
`
` 
`
`17
`
`

`

`
` 
`
`
`
`
`
`
`Long teaches that such an arrangement “provide(s) a vise in which the
`
`adjusting-screw is constructed to operate substantially within the limits of the fixed
`
`jaw member.” EX1007, 1:11-15. Accordingly, Long expressly explains that a
`
`POSITA could adopt the above-described arrangement so that the adjusting-screw
`
`(part of the “spindle assembly”) operates within the fixed jaw member.
`
`
`
`Further, Long is just one example of a prior art vise in which a connection
`
`member of a movable jaw is inside of, and in communication with, a connection
`
`member of a stationary jaw. That is, such an arrangement is well within the
`
`knowledge and experience of a POSITA. A POSITA would find it obvious to have
`
`a hitch vise as generally taught by Cornes, and include a moveable jaw member
`
`that is in communication with the inside of the fixed jaw member as taught by
`
`Long, because the substitution of one known element for another to obtain
`
`predictable results is obvious. EX1003 ¶¶211, 218, 221.
`
`6. Motivation to Combine Cornes And Either Long Or
`
`Murray (Claim 23)
`
`
`
`To the extent that Cornes does not expressly or inherently disclose “a
`
`threaded spindle [that is] rotatable,” or it would not be obvi