IPR2019-00663
`U.S. Patent No. 9,187,016
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`
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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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`Nuna Baby Essentials, Inc. and Nuna International B.V.,
`
`Petitioner,
`
`v.
`
`Britax Child Safety, Inc.,
`
`Patent Owner
`
`_______________
`
`Case IPR2019-00663
`
`Patent 9,187,016
`
`_________________________________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`U.S. Patent No. 9,187,016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`Nuna Baby Essentials, Inc. and Nuna International B.V.,
`
`Petitioner,
`
`v.
`
`Britax Child Safety, Inc.,
`
`Patent Owner
`
`_______________
`
`Case IPR2019-00663
`
`Patent 9,187,016
`
`_________________________________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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`I.
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`TABLE OF CONTENTS
`
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`INTRODUCTION ....................................................................................... 1
`
`II.
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`CLAIM CONSTRUCTION ......................................................................... 1
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`A. PO’s Proposed Constructions are the Ordinary Meaning of the Claim Terms
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`Consistent with the Specification. ....................................................................... 1
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`B. Institution Decision Is Preliminary and Not Based on Fully Developed
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`Record. ............................................................................................................... 3
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`C. Petitioner’s Reply Fails to Establish PO’s Construction is Improper ............ 6
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`III. PETITIONER FAILS TO MEET ITS BURDEN TO SHOW ALL OF THE
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`CLAIMS ARE UNPATENTABLE ......................................................................10
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`A. Ground 1 –Claims 1, 2, 12, 14-16, 18, and 19 .............................................10
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`B. Ground 1 – Claims 3-5 and 17 ....................................................................15
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`C. Ground 2 .....................................................................................................16
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`D. Ground 3 .....................................................................................................16
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`IV. OBJECTIVE INDICIA OF NONOBVIOUSNESS .....................................18
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`A. PO Has Established the Requisite Nexus ....................................................19
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`B. PO’s Commercial Products Received Significant Praise .............................20
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`C. PO’s Product Met a Long-Felt Need ...........................................................22
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`V.
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`CONCLUSION ..........................................................................................24
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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` LIST OF REFERENCES CITED
`
`
`
`CASES
`
`Bilstad v. Wakalopulos, 386 F.3d 1116, 1121 (Fed. Cir. 2004) .............................13
`
`Eurand, Inc. v. Mylan Pharm. Inc., 676 F.3d 1063, 1075 (Fed. Cir. 2012) ............18
`
`In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984) ......................................18
`
`Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) ..................18
`
`Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.
`
`Cir. 2004) ........................................................................................................... 2
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) ............................... 1
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
`
`F.3d 1340, 1349 (Fed. Cir. 2012) .......................................................................18
`
`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996) .................. 2
`
`WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) ...................................19
`
`STATUTES
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`35 U.S.C. § 312(a)(3) ............................................................................................13
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`37 C.F.R. § 42.100(b) ............................................................................................ 1
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`37 C.F.R. § 42.23(b) .............................................................................................13
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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`UPDATED LIST OF EXHIBITS CITED
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`Description
`
`Emmert (U.S. Patent Application Publication No.
`2006/0091709)
`
`Yanaka (U.S. Patent No. 6,672,664)
`
`Fritz I (U.S. Patent No. 8,262,161)
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`Fritz II (U.S. Patent No. 8,550,555)
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`Fritz III (U.S. Patent No. 8,690,244)
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`U.S. Patent No. 8,845,022 (Parent Application)
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`Parent Application Prosecution History
`
`Adachi (U.S. Patent No. 7,163,265)
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`IPR2019-00066 – Decision Denying Institution of IPR
`
`Declaration of Richard Kent
`
`–
`
`at
`available
`(last
`visited
`
`awards
`Frontier ClickTight
`https://us.britax.com/press/awards/
`November 27, 2019)
`
` “BRITAX FRONTIER CLICKTIGHT REVIEW:
`THE BEST US/CANADA COMBINATION SEAT”
`(June 21, 2014) available at
`https://www.thecarcrashdetective.com/britax-frontier-
`clicktight-review/
`
`“Britax Frontier Full Review” (March 2, 2017)
`available at https://happybabyreviews.com/car-seat-
`reviews/britax-frontier/
`
`iv
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`Exhibit
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`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Ex. 2012
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`Ex. 2013
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`Ex. 2014
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`Ex. 2015
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`Ex. 2016
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`Ex. 2017
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`Ex. 2018
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`Ex. 2019
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`Ex. 2020
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`Ex. 2021
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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`“Britax Frontier 90 Harness-2-Booster Carseat Review
`With Video”
`(July
`1,
`2013)
`available
`at
`https://www.thesuburbanmom.com/2013/07/01/britax-
`frontier-90-harness-2-booster-carseat-review-with-
`video/
`
`“Britax Frontier 90: the quickest unofficial review of
`the quickest seat you’ve ever installed” (May 15,
`2013) available at https://csftl.org/britax-frontier-90-
`the-quickest-unofficial-review-of-the-quickest-seat-
`youve-ever-installed/
`
`“Britax Frontier ClickTight Car Seat Review” (April
`2, 2015) available at
`http://convertiblecarseatreview.com/britax-frontier-
`clicktight-car-seat-review/
`
`“Britax Frontier ClickTight Review” (April 21, 2015)
`available at https://www.sippycupmom.com/review-
`of-the-britax-frontier-clicktight/
`
`“Britax Frontier ClickTight Harness-2-Booster: The
`Last Car Seat Your Child Will Ever Need” (April 16,
`2016) available at
`https://thiswestcoastmommy.com/britax-frontier-
`clicktight-harness-2-booster/
`
`Britax Frontier 90 Review” (September 15, 2013)
`available at
`https://www.mommysfabulousfinds.com/britax-
`frontier-90-combination-harness-2-booster-review/
`
`“BRITAX FRONTIER CLICKTIGHT HARNESS TO
`BOOSTER SEAT REVIEW” (August 2016) available
`at https://raveandreview.com/2016/08/britax-frontier-
`clicktight-harness-to-booster-seat-review.html
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`Declaration of Kate Clark
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`
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`v
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`Ex. 2022
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`Ex. 2023
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`Ex. 2024
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`Ex. 2025
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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`Frontier 90 User Manual
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`Frontier CLICKTIGHT Manual
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`Frontier CLICKTIGHT available at
`https://us.britax.com/frontier-clicktight-forward-
`facing-only-seats/ (last visited December 4, 2019)
`
`FRONTIER COMBINATION HARNESS-2-Booster
`available at https://us.britax.com/retired/frontier/ (last
`visited April, 8, 2020)
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`IPR2019-00663
`U.S. Patent No. 9,187,016
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`I.
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`
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`INTRODUCTION
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`Britax Child Safety, Inc. (“PO”) submits the following Sur-Reply in response
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`to the Reply filed by Nuna International B.V. and Nuna Baby Essentials, Inc.
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`(“Petitioner”). Petitioner misconstrues statements made by the Board and PO and
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`ignores the ordinary meaning of the claim terms in light of the specification in an
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`attempt to establish obviousness of the claimed invention. Petitioner fails to establish
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`unpatentability of the challenged claims of the ‘016 patent, and thus the Board
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`should affirm the patentability of the claims of the ‘016 patent.
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`II. CLAIM CONSTRUCTION
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`A.
`PO’s Proposed Constructions are the Ordinary Meaning of the
`Claim Terms Consistent with the Specification.
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`As Petitioner acknowledges, “the ordinary meaning of a claim term is in its
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`meaning to the ordinary artisan after reading the entire patent.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005); see Reply at 2. Thus, it is undisputed
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`that the claim terms should be given their ordinary and customary meaning,
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`consistent with the specification, as a person of ordinary skill in the art
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`(“POSITA”) understood them. 37 C.F.R. § 42.100(b); Phillips, 415 F.3d at 1313.
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`Yet, Petitioner (and the preliminary construction applied in the Institution Decision)
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`ignores the specification when it suggests that the interpretation of a seat base does
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`not refer to the seat shape that directly receives an occupant of the child seat when
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`the child seat is in use. The litigation-inspired construction relied on by Petitioner
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`ignores the specification and the plain meaning of the claim terms by improperly
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`stretching the meaning of clear terms to the point of reading on a base like that found
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`in Yamazaki.
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`Claim construction begins with the claim language itself, and the proper
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`context of claim terms is then gleaned from the patent, and usually, the specification
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`is dispositive, as it is the single best guide to the meaning of a disputed term. See
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also
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`Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.
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`Cir. 2004).
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`PO’s Response follows this well-established guidance. The plain language of
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`the claim makes clear that the seat base includes a seat portion and a backrest portion.
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`(See, e.g., Claim 1 (“a seat base defining a seat portion and a backrest portion…”)).
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`These are the portions of the seat shape that receive an occupant of the child seat
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`when the child seat is in use. As set forth in the Response, when the term “seat base”
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`is read in light of the specification, “seat base” includes a seat portion and a backrest
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`portion that are portions of a seat shape to receive an occupant of the child seat. (See,
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`e.g., Response, 10, 22-26). Furthermore, the figures of the ‘016 patent further clarify
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`U.S. Patent No. 9,187,016
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`that the “seat base” receives an occupant. (See, e.g., Ex. 1001, FIGS. 1, 2, 7A, 8).
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`This meaning and understanding is further reinforced by the declaration of Dr. Kent.
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`(See, Ex. 2010, para. 48-56). Thus, a POSITA would understand the ordinary and
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`customary meaning of seat base, consistent with the plain language of the claims and
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`the specification, is a seat base designed to directly receive an occupant of the child
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`seat when the child seat is in use. In contrast, as shown further below, each of
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`Petitioner’s arguments ignore these well-established guidelines and fail to suggest
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`that PO’s proposed construction is improper.
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`B.
`Institution Decision Is Preliminary and Not Based on Fully
`Developed Record.
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`Petitioner’s Reply ignores the posture of the proceeding when the Institution
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`Decision was entered and ignores statements made by PO in its Preliminary
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`Response and throughout the record.
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`First, any construction of claim terms by the Board in the Institution Decision
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`is merely a preliminary finding. As expressly set forth by the Board in the
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`Institution Decision:
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`[O]ur factual findings and determinations at this stage of
`the proceeding are preliminary, and based on the
`evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which inter
`partes review is instituted. Our final decision will be based
`on the record as fully developed during trial.
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`(Institution Decision, 44 (emphasis added)). Any interpretation of the claim terms in
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`the Institution Decision is preliminary and non-binding and is not based on a
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`complete evidentiary record. The Institution Decision specifically contemplates a
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`further developed record and associated evidence before issuing a final decision.1
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`Thus, when Petitioner suggests that PO proposed “constructions in its Response for
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`the claim terms ‘seat base’ and ‘backrest portion’ that are contrary to the
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`requirements of the claims as identified by the Board in its Decision” (Reply, 1),
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`Petitioner mischaracterizes the Institution Decision out of its appropriate context by
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`suggesting some “requirements” are in place.
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`Second, PO’s Response does exactly what is contemplated by the Institution
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`Decision by directing the Board to further evidence in the intrinsic record as well as
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`submitting extrinsic evidence which establish a proper construction of the terms seat
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`portion and backrest portion. In fact, the Preliminary Response explicitly states that
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`“for the purpose of this Preliminary Response only, no terms need to be construed
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`to determine that institution should be denied. In the event institution is not denied,
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`[PO] reserves the right to submit its proposed claim constructions at the appropriate
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`time.” (Preliminary Response, 19).
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`1 See also Institution Decision at 31 (“We decline at this point in the proceeding…”).
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`The statement clearly limited the lack of a proposed claim construction to the
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`Preliminary Response only, and was also not presented in the form of an argument,
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`as alleged by Petitioner. Instead, the statement merely indicated that construing
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`claim terms was not necessary to a decision on institution of IPR based on the
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`arguments presented therein, and PO reserved the right to submit a claim
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`construction in further proceedings. Thus, Petitioner’s statement that “PO raises
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`claim construction arguments in its Response despite its previous arguments in its
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`Preliminary Response that claim construction was not necessary” (Reply, 1) is not
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`well-founded, and ignores the arguments included in the Preliminary Response.
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`It neither should have been surprising to Petitioner that PO would include a
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`claim construction in the Response, nor should it have been seen as a reversal of
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`course from a previously argued position taken by PO. Throughout this proceeding,
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`PO has consistently applied the plain and ordinary meaning of the claims
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`consistently with the guidelines of Phillips and identified the deficiencies of the cited
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`references in both its Preliminary Response and Response. The preliminary
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`interpretation of the claim terms used by the Board in the Institution Decision, based
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`on a one-sided record at that point in the proceeding, was incorrect because the Board
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`failed to interpret the claims in light of the specification at the preliminary stage. In
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`its Response, PO directly addressed this improper construction. (Response, 22-26).
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`U.S. Patent No. 9,187,016
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`But instead, Petitioner’s Reply misconstrues facts and the record to mislead
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`the Board and cast PO in a poor light. The Response sets forth how a POSITA would
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`have understood the terms “seat base” and “backrest portion” when reading the
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`claims in light of the specification.
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`C.
`Petitioner’s Reply Fails to Establish PO’s Construction is
`Improper
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`
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`Petitioner would have the term “seat base” construed as not necessarily being
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`part of a child seat for directly receiving an occupant (Reply, 7), which is similar to
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`the Board’s preliminary interpretation of “seat base” in the Institution Decision.
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`Each of the arguments submitted by Petitioner fails to rebut or otherwise suggest a
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`construction inconsistent with PO’s proposed construction of “seat base” and
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`“backrest portion.”
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`Despite the multiple passages from the specification cited in the Response to
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`support the meaning of the term “seat base” as a POSITA would understand that
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`term, Petitioner alleges that PO’s construction is divorced from the specification.
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`(Reply, 2). Petitioner itself acknowledges that the ‘016 Patent states: “The child seat
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`10 comprises a seat base 12 defining a seat portion 18 and a backrest portion 16.
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`The seat portion 18 and backrest portion 16 may define a seat shape that is
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`configured to receive an occupant, such as a child.” (Reply, 2 (emphasis added)).
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`Petitioner also goes on to give an example of how the seat base is configured to
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`receive a child occupant, such as by adding padding or cushion to provide additional
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`support or comfort. (Reply, 2-3).
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`But yet despite noting that the specification defines the “seat base” in this
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`manner, Petitioner alleges that the specification does not support that the seat base
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`directly receives a child occupant. (Reply, 2). This is directly at odds with
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`Petitioner’s own acknowledgements.
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`Petitioner’s further attempts to support its flawed interpretation by relying on
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`the recitation of padding in claim 13 does not suggest a construction contrary to PO’s
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`proposed either. First, with respect to claim 13, Petitioner does not consider the
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`entire language of claim 13. Claim 13 in whole recites:
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`The child seat according to claim 1, wherein the base
`defines padding positioned on and attached to the backrest
`portion and the seat portion so as to receive an occupant
`therein, wherein the tensioning mechanism is accessible
`and rotatable between the first position and the second
`position with the padding attached to the backrest portion.
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`Thus, contrary to Petitioner’s characterization, claim 13 is not simply the inclusion
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`of padding in a child seat as suggested by Petitioner and its strained claim-
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`differentiation-type argument. As noted in the specification and pointed out by
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`Petitioner (Reply, 3 (citing ‘016 patent at 6:44-46)), padding or cushions may be
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`added to increase the comfort for the seat occupant. Such recitation supports PO’s
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`assertion regarding how a POSITA would understand the term “seat base” and that
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`the seat base is designed to receive an occupant for seating therein (not a separate
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`base) – whether configured as recited in claim 13 or not or whether with padding or
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`not. The existence or non-existence of padding does not in any way interfere with
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`(or render indirect) the support for or reception of the child in the seat base of the
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`claimed invention. With or without padding, the child is supported or received
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`directly by, and in this same sense received directly on, the seat base.
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`Petitioner takes particular issue with the word “directly” in the construction
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`of the term “seat base”: a seat base designed to directly receive an occupant. While
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`the specification does not use the term “directly”, a POSITA reading the plain
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`language of the claims in view of the entire patent would have had this understanding
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`of the meaning of the terms. (See, e.g., Ex. 2010, para. 49).
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`For example, the ‘016 patent discloses that the tensioning mechanism may be
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`pivotably attached to the backrest portion 16 of the seat base 12 such that the
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`tensioning mechanism 30 can protrude into the space of the child seat reserved for
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`an occupant when the tensioning mechanism 30 is located in the second position.
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`(Ex. 2010, para. 54). Because the tensioning mechanism may be located in a space
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`reserved for an occupant when it is in the second position to receive the vehicle belt,
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`one of ordinary skill would understand that the “seat base” is configured to directly
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`receive an occupant in this space when the tensioning mechanism is in the first
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`position. Otherwise, there would be no space reserved for the occupant in the seat
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`base if the seat base were not designed to directly receive a child. The Response and
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`supporting intrinsic and extrinsic evidence also points to numerous other passages
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`in the specification that supports this interpretation. (Response, 10-12,23-26).
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`Furthermore, Petitioner fails to identify any passage in the specification that
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`should cause a POSITA to interpret the term “seat base” differently than a structure
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`that is designed to directly receive a child occupant. The inescapable conclusion of
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`a POSITA, upon reviewing the specification of the ‘016 patent, is that PO provided
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`a tensioning mechanism in a one-component child seat – which is in contrast with
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`the two-component designs in which a separate base was attached to vehicle seat,
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`and then a separate part that supported the child was attachable to the separate base
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`(which is demonstrated in Yamazaki).
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`Thus, based on the ‘016 patent specification and figures, a POSITA would
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`have understood that the term “seat base” in the independent claims refers to a
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`component of a child safety seat that defines a seat shape to directly receive an
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`occupant, as opposed to the indirect support that would be provided by the base of a
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`two-component design (e.g., Yamazaki).
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`Similarly, as noted in the Response, the term “backrest portion” in the
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`independent claims of the ‘016 patent would be understood by a POSITA as
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`referring to a component of the seat base that is configured for directly supporting
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`an occupant’s back when the child seat is in use, not a component structure that
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`provides indirect force to the child seat without providing force directly to an
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`occupant. (Response, 23-26).
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`Petitioner argues the term “backrest portion” should encompass both direct or
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`indirect support, for example, via a separate seat base in a two-component system.
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`However, as noted above for the term “seat base” portion, there is nothing in the
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`specification that would lead a POSITA to support Petitioner’s contention. As the
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`“backrest portion” is a portion of the seat base that directly receives a child, the
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`“backrest portion” then necessarily directly supports the occupant’s back when the
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`child seat is in use. Accordingly, the broad construction of the claim terms proposed
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`by Petitioner is divorced from the specification and should be rejected.
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`III. PETITIONER FAILS TO MEET ITS BURDEN TO SHOW ALL OF
`THE CLAIMS ARE UNPATENTABLE
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`A. Ground 1 –Claims 1, 2, 12, 14-16, 18, and 19
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`
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`The central dispute regarding interpretation of the prior art relative to the
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`independent claims hinges on the interpretation of the “seat base.” With respect to
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`the interpretation, Petitioner maintains that the claims should be interpreted broadly
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`to include that the “seat base” does not necessarily directly receive a child occupant
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`and the “backrest portion” can indirectly support a child occupant. However, as
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`noted above, this claim construction is completely divorced from the specification.
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`Thus, PO maintains that, for the reasons provided throughout the record, none of the
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`cited references teach or suggest “a tensioning mechanism attached to the backrest
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`U.S. Patent No. 9,187,016
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`portion of the seat base [of the child seat].”
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`Furthermore with respect to the teachings of Yamazaki, Petitioner alleges that
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`the Board’s findings in the Institution Decision are binding with respect to how the
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`claims and prior art should be interpreted. However, as noted above, the Institution
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`Decision is a non-binding preliminary decision that is not based on a full evidentiary
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`record. Accordingly, Petitioner’s assertion that Yamazaki and the claim language
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`should only be interpreted as done by the Board in the Institution Decision is
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`incorrect.
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`Additionally, in attempt to bolster their position with respect to Yamazaki’s
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`teaching, Petitioner cobbles together disparate embodiments allegedly taught by
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`Yamazaki. Specifically, Petitioner alleges that
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`Yamazaki teaches that its back plate 10a is configured by
`the addition of a seat body (not shown) to receive an
`occupant of the child seat. In one embodiment, Yamazaki
`discloses that child car seat 1 has a seat body 2 and a base
`3 supporting the seat body 2 thereon. The seat body 2 is
`formed integrally with the base 3 or is supported on the
`base 3.
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`(Reply, 7 (internal citations omitted, emphasis added)).
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`While Yamazaki does include the above citation, this description addresses a
`
`seat identified as prior art to Yamazaki. To the extent that Petitioner is implying that
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`this “embodiment” teaches a tensioning mechanism on a backrest portion of seat
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`base to directly receive a child occupant is incorrect. The only mention of the seat
`
`body being formed integrally with a base is in relation to FIG. 9, which is expressly
`
`identified as prior art, with the well-known convention of a label “PRIOR ART”.
`
`(Ex. 1005, Fig. 9, col. 1, ll. 11-15; see also, e.g., MPEP § 608.02(g)). In other words,
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`FIG. 9 of Yamazaki is used only to show different child seats that exist in the art –
`
`one without any tensioning mechanism as claimed in the ‘016 patent: not a seat or
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`an embodiment of the alleged invention in Yamazaki.
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`Further, Yamazaki does not provide any teaching of suggestion to modify the
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`prior art seat in Fig. 9 of Yamazaki with the remaining description in Yamazaki as
`
`they are two completely different seats. Further, Petitioner fails to provide any such
`
`teaching, motivation, or reasoning otherwise as to why a POSITA would have
`
`modified or combined these disclosures of very different seats.
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` That is because Yamazaki fails to teach forming a tensioning mechanism on
`
`a backrest of a seat for receiving an occupant. Rather, as already pointed out in the
`
`Response, Yamazaki teaches only its alleged tensioning mechanism being disposed
`
`on a back plate of a base that receives a seat body to secure the seat body to a vehicle.
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`(Ex. 2010, para. 83).
`
`Furthermore, even if Yamazaki did teach this different embodiment (which it
`
`does not) and to the extent that Petitioner is relying on this alleged embodiment to
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`teach that the alleged tensioning mechanism might somehow be disposed on a
`
`backrest of a seat body configured to receive an occupant, this is an improper new
`
`argument that the Board cannot give any weight. “It is of the utmost importance that
`
`petitioners in the IPR proceedings adhere to the requirement that the initial petition
`
`identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge
`
`to each claim.’” Bilstad v. Wakalopulos, 386 F.3d 1116, 1121 (Fed. Cir. 2004))
`
`(quoting 35 U.S.C. § 312(a)(3)). Accordingly, an IPR petitioner may not raise in
`
`reply “an entirely new rationale” for why a claim would have been obvious. See Id.
`
`at 1370; 37 C.F.R. § 42.23(b). Specifically, this new interpretation of Yamazaki was
`
`not part of any argument submitted by Petitioner in its Petition. Rather, this
`
`interpretation of Yamazaki appears to be an afterthought that is only now being
`
`raised, and as such, must be given no weight.
`
`Finally, Petitioner, if PO’s claim construction is adopted, alleges that PO still
`
`fails to distinguish Yamazaki’s seat portion and backrest portion from that of the
`
`‘016 Patent. Petitioner’s suggestion that PO’s distinction between the two-
`
`component child seat taught by Yamazaki and the one-component child seat of the
`
`‘016 is arbitrary should be rejected.
`
`The distinction made in the Response between a two-component child seat
`
`and a one-component child seat refers to those child seats that either attach directly
`
`to a vehicle seat (a one-component seat in that it has only a seat body) or those child
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`13
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`seats that attach to a base to be secured to a vehicle seat (a two-component seat in
`
`that it has base attached to a vehicle seat and the base receives the seat body). The
`
`distinction between a one-component seat and a two-component seat is a distinction
`
`not only known by those skilled in the art but to any lay person who has ever shopped
`
`for child seat. This distinction demonstrates the differences of the child seat claimed
`
`in the ‘016 patent and the child seat disclosed in Yamazaki and Washimi.
`
`As an example (which is set forth in the Response more fully), the child seat
`
`of Yamazaki is a two-component child seat that requires two components to be
`
`properly installed to a vehicle seat: 1) a base to attach to a vehicle seat and 2) a seat
`
`body for receiving a child that attaches to the base. (See, e.g., Response, 27-29). This
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`is in contrast to the child seat described and claimed in the ‘016 patent, which is only
`
`a one-component car seat in that it includes just a seat body that attaches directly
`
`to the vehicle seat and directly receives a child. (See, e.g., Response, 25). This
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`distinction between the one-component and two-component child seats is important
`
`in demonstrating that the alleged tensioning mechanism of Yamazaki is disposed on
`
`the base portion of the child seat not the seat body. Accordingly, neither Yamazaki,
`
`nor any of the other cited references, teach or suggest “a tensioning mechanism
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`attached to the backrest portion of the seat base [of the child seat].”
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`B. Ground 1 – Claims 3-5 and 17
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`In addition to the failures of Yamazaki described above, with respect to claim
`
`3, Petitioner again mischaracterizes PO’s Response, alleging that “PO and its expert
`
`do not address or refute the reasons for the combination for claim 3.” (Reply, 3).
`
`Petitioner alleges that PO’s expert agrees that “a seat for an occupant may have
`
`armrests to make the seating surface more comfortable.” (Reply, 11). However,
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`comfort is not the issue when considering the combination of Yamazaki and
`
`Washimi: the issue is whether a base that is designed only to receive a seat body not
`
`an occupant would actually have armrests on the base.
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`As noted in the Response, there is no need to make the base of Yamazaki,
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`which is designed only to receive a seat body, more comfortable by adding armrests
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`because the base is not a seating surface. No child would ever be placed on the base
`
`disclosed in Yamazaki, so additions for the sake of comfort are completely
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`nonsensical. And Petitioner has failed to identify any motivation to combine the two
`
`references, as suggested by Petitioner.
`
`
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`Furthermore, with respect to claims 3-5, Petitioner alleges that PO’s
`
`interpretation of Yamazaki runs contrary to Examiner’s findings during the
`
`prosecution of the ‘016 patent. (Reply, 11, 14, 15, 16). Petitioner refers to the
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`prosecution of the Parent Application, when the Examiner rejected certain claims
`
`over Yamazaki. In that prosecution, PO did not make any admission with respect to
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`this feature or finding by the Examiner in such a way that shapes how the Board
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`interprets claims 3-5 and 17. (Ex. 2007, 52-63). Rather, as PO sets forth in its
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`Response, the deficiencies of Yamazaki with respect to claims 3-5 and 17 are clear
`
`and the same as during examination of the Parent Application.
`
`
`
`C. Ground 2
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`
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`For the reasons addressed in the Response, Petitioner maintains Ground 2
`
`should fail. Petitioner’s arguments continue to ignore that Yamazaki describes a
`
`base, and fail to articulate any motivation for a POSITA to modify the base of
`
`Yamazaki to include a harness. (See, e.g., Ex. 2010, para. 117). The proposed
`
`modification of Yamazaki in view of Parker is not obviousness not even plausible.
`
`D. Ground 3
`
`
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`With respect to Ground 3, Petitioner allegation that “PO fails to address
`
`Petitioner’s proposed motivation to combine and simply states that the combination
`
`is not possible because the latch for the seat to the base member would have different
`
`requirements…PO and its expert, however, do not explain what those different
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`requirements would be, let alone why they make the combination impossible”
`
`(Reply, 19) is incorrect.
`
`In the Response, PO articulates that the proposed motivation for combining
`
`Yamazaki, Washimi, and Hutchinson to teach claim 7 and 9 is improper and beyond
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`16
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`what would have been within reach of a POSITA at the time of the invention. (See,
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`U.S. Patent No. 9,187,016
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`e.g., Response, 63-67; Ex. 2010, paras. 0130-144).
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`The claimed subject matter is directed to locking the tensioning mechanism
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`to the seat body while Hutchinson is directed to latching a seat body to a base
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`member. As stated in the Response, “the occupant packaging considerations of the
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`two very different systems are numerous, for example, an occupant’s interaction
`
`with these locking mechanisms and/or latches are very different; the latches
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`experience different loads during installation of the child seat; the l
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