Trials@uspto.gov
`571-272-7822
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` Paper No. 8
`Entered: September 4, 2019
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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.,
`Nuna Baby,
`
`v.
`
`BRITAX CHILD SAFETY, INC.,
`Britax.
`____________
`
`Case IPR2019-00663
`Patent 9,187,016 B2
`____________
`
`Before LINDA E. HORNER, SCOTT A. DANIELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`
`
`
`
`
` Paper No. 8
`Entered: September 4, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NUNA BABY ESSENTIALS, INC. and
`NUNA INTERNATIONAL B.V.,
`Nuna Baby,
`
`v.
`
`BRITAX CHILD SAFETY, INC.,
`Britax.
`____________
`
`Case IPR2019-00663
`Patent 9,187,016 B2
`____________
`
`Before LINDA E. HORNER, SCOTT A. DANIELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2019-00663
`Patent 9,187,016 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Nuna Baby filed a Petition to institute an inter partes review of claims
`1–19 of U.S. Patent No. 9,187,016 B2 (“the ’016 patent”). Paper 3 (“Pet.”).
`Britax filed a Preliminary Response. Paper 77 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition and Preliminary Response and for the reasons
`explained below, we determine that Nuna Baby has shown that there is a
`reasonable likelihood that it would prevail with respect to at least one of the
`challenged claims. As such, we institute an inter partes review of claims 1–
`19 of the ’016 patent.
`B. Additional Proceedings
`Neither party indicates that the ’016 patent is involved in a lawsuit or
`other legal proceeding. Pet. 92; Paper 6, 3.
`C. The ’016 Patent
`The ’016 patent (Ex. 1001), titled “Child Seat with Belt Tensioning
`Mechanism for Improved Installation,” describes “a child safety seat
`including a tensioning mechanism for applying tension to a seat belt to more
`fully secure the child safety seat to a car seat.” Ex. 1001, 1:18–20. Figure 1
`of the ’016 patent is reproduced below.
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`Figure 1 of the ’016 patent “shows a front view of a child safety seat.” Id. at
`4:30–31. Child safety seat 10 includes seat base 12 having seat portion 18
`and backrest portion 16 for receiving an occupant, e.g., a child. Id. at 6:17–
`22. Seat 10 further includes padding 19, arm rests 22, 23 and harness 50 to
`secure the child in the child safety seat. Id. at 6:23–46.
`Annotated Figure 6 of the ’016 patent, reproduced below, depicts the
`child safety seat and tensioning mechanism 30.
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`Figure 6 of the ’016 patent, above, as annotated by the Board, “shows a front
`view of the child seat” and tensioning mechanism 30 in conjunction with a
`vehicle seat belt 25. Id. at 5:6, 12:17–21. Vehicle seat belt 25 includes lap
`section 27 shown highlighted in green, and shoulder section 29 shown
`highlighted in yellow. The ’016 patent explains that “the tensioning
`mechanism 30 is configured to receive a portion of the lap section 27 of the
`belt 25 and a portion of the shoulder section 29 of the belt . . . along a belt
`path, such as within the belt guide channel 79.” Id. at 12:36–40.
`A safety concern that child safety seat 10 and tensioning mechanism
`30 is intended to address is slack or looseness, i.e., not enough tension in a
`vehicle seat belt as the seat belt secures the child safety seat to a vehicle seat.
`See id. at 1:39–44 (The ’016 patent explains that “maintaining a proper
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`amount of tension in the seat belt can also be difficult. Indeed, an improper
`amount of tension is undesirable and may negatively affect the safety of the
`occupant secured within the child seat.”). To address this safety concern,
`tensioning mechanism 30 is designed to apply tension to both the lap and
`shoulder sections 27, 29 of seat belt 25 and eliminate any slack or looseness.
`See id. at 12:40–44, 12:58‒13:3. The ’016 patent states that “the tensioning
`mechanism is configured to apply tension to the portion of the lap section
`and the portion of the shoulder section of the belt to secure the child seat to
`the car seat in a tensioned configuration.” Id. at 1:66–2:3. Annotated Figure
`7 of the ’016 patent is reproduced below.
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`Annotated Figure 7, above, illustrates both lap and shoulder sections 27, 29
`of the seat belt received in tensioning mechanism 30. Id. at 12:63–66 (The
`’016 patent explains that “the tensioning mechanism 30 may be rotated (e.g.,
`in the direction of arrow C) to apply tension to the portion of the lap section
`25 and the portion of the shoulder section 29 of the belt 25 engaged with the
`tensioning mechanism 30.”).
`D. Illustrative Claim
`Of the challenged claims 1–19, claims 1, 12, 15, and 19 are
`independent. Each of dependent claims 2–11, 13, and 14, depends from
`claim 1, and claims 16–18 depend from independent claim 15. Claim 1
`illustrates the claimed subject matter and is reproduced below with emphasis
`added to particular limitations of importance:
`1. A child seat configured to be secured to a seat of a car, the
`child seat comprising:
`a seat base defining a seat portion and a backrest portion,
`wherein the backrest portion defines a front side and a rear side,
`wherein the seat portion defines a top side and a bottom side,
`wherein the seat base is configured to be positioned on the seat
`of the car such that the rear side of the backrest portion is
`positioned adjacent a backrest portion of the seat of the car and
`the bottom side of the seat portion is positioned adjacent a seat
`portion of the seat of the car, wherein the seat base is further
`configured to receive a belt of the seat of the car such that the
`belt is positioned around at least one of the front side of the
`backrest portion or the top side of the seat portion and the belt is
`engaged with a buckle of the seat of the car to secure the child
`seat to the seat of the car in an untensioned configuration,
`wherein the belt defines a lap section and a shoulder section; and
`a tensioning mechanism attached to the backrest portion of
`the seat base, wherein the tensioning mechanism is rotatable
`between a first position substantially adjacent to at least the
`backrest portion of the seat base and a second position disposed
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`therefrom, wherein, in the second position, the tensioning
`mechanism is configured to receive a portion of the lap section
`of the belt and a portion of the shoulder section of the belt,
`wherein, in the first position, the tensioning mechanism is
`configured to apply tension to the portion of the lap section and
`the portion of the shoulder section of the belt to secure the child
`seat to the seat of the car in a tensioned configuration, wherein,
`when in the first position, the tensioning mechanism defines a
`generally vertical orientation, and wherein, when in the second
`position,
`the
`tensioning mechanism defines a generally
`horizontal orientation.
`Ex. 1001, 14:31‒64 (emphasis added).
`E. The Alleged Grounds of Unpatentability
`Nuna Baby contends that the challenged claims are unpatentable on
`the following specific grounds. 1
`References
`Yamazaki2 and Washimi3
`Yamazaki, Washimi, and Parker4
`Yamazaki, Washimi, and Hutchinson5
`
`Basis Claims Challenged
`§ 103 1–5, 12, and 14–19
`§ 103 6 and 13
`§ 103 7–11
`
`F. Discretionary Denial Under 35 U.S.C. § 325(d)
`We have discretion to deny a petition when “the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`35 U.S.C. § 325(d). In evaluating whether to exercise our discretion under
`
`
`1 Nuna Baby supports its challenge with a Declaration of Andrew Bowman,
`B.S.M.E., M.S. (Ex. 1003). See infra.
`2 Ex. 1005, US Patent No. 6,508,510 B2 (Jan. 21, 2003).
`3 Ex. 1012, Certified translation of Japanese Laid-open Patent Application,
`Publication No. Hei 5-185869 (July 27, 1993).
`4 Ex. 1007, US Patent No. 5,061,012 (Oct. 29, 1991).
`5 Ex. 1008, US Patent Appl’n. Pub. No. 2009/0001791 A1 (Jan. 1, 2009).
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`§ 325(d), we weigh the following non-exclusive factors (“the Becton,
`Dickinson factors”):
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`2017 WL 6405100, at *6 (PTAB Dec. 15, 2017) (precedential in relevant
`part) (citations omitted); see also NHK Spring Co. v. Intri-Plex Techs., Inc.,
`Case IPR2018-00752, 2018 WL 4373643, at *4‒7 (PTAB Sept. 12, 2018)
`(precedential) (adopting and applying the Becton, Dickinson factors).
`Britax challenges the Petition under 35 U.S.C. § 325(d), arguing that
`we should deny institution because Nuna Baby “offers nothing of substance
`in the Petition beyond what the Examiner already considered during
`prosecution.” Prelim. Resp. 27. Britax argues specifically that Yamazaki,
`the primary reference in the present challenges, was already considered
`during the prosecution of the ’016 patent and in the parent application (U.S.
`Patent Appl’n No. 13/602,846 (“the ’846 application”), which issued as U.S.
`Patent No. 8,845,022 B2 (“the ’022 patent”)), from which the ’016 patent
`issued as a continuation. Id.; see also Ex. 1001, [63] (Related U.S.
`Application Data). Also, Britax argues that Yamazaki is no different from,
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`and essentially cumulative to Emmert (U.S. Patent Appl’n Pub. No.
`2006/0091709 A1), which was the basis for an anticipation rejection in the
`prosecution of the ’022 patent. Id. at 31–35. Britax argues further that
`Washimi, the secondary reference in the obviousness challenges before us
`here, is substantially the same as certain prior art references cited and
`considered during prosecution of the ’022 patent. Id. at 35–38.
`The Office, however, has not previously substantively considered
`Yamazaki in combination with the prior art now cited in this proceeding, nor
`has the Office substantively evaluated these references asserted by Nuna
`Baby in the context of the claims and specific limitations at issue in this
`proceeding. For the reasons discussed below, we decline to exercise our
`discretion to deny institution under 35 U.S.C. § 325(d).
`1. Prosecution of the ’016 and ’022 Patents
`The ’016 patent is a continuation of the above-noted parent ’846
`application that became the ’022 patent. Ex. 1001, [63] (Related U.S.
`Application Data). Before addressing the Becton, Dickinson factors, we first
`discuss the treatment of Yamazaki and other prior art references in the
`prosecution of the parent ’022 patent and the ’016 patent.
`’022 patent prosecution
`As noted above, the ’022 patent issued from the prosecution of the
`’846 application. Ex. 2006, [21]; Ex. 2007. In the only substantive Office
`Action during the prosecution of the ’846 application, the Examiner rejected
`independent claim 1, drawn to, inter alia, “a child seat” comprising “a seat
`base” and “a tensioning mechanism,” and dependent claim 2 as anticipated
`by each of Yanaka (U.S. Patent No. 6,672,664 B2), Adachi (U.S. Patent No.
`7,163,265 B2), and Emmert. Ex. 2007, 73–76. The Examiner rejected
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`independent claim 19, drawn to, inter alia, a “method for manufacturing a
`child seat” comprising “providing a seat base” and “attaching a tensioning
`mechanism to the seat base,” as obvious over each of Yanaka, Adachi, and
`Emmert. Id. at 77‒78, 867‒868. The Examiner also rejected original
`dependent claim 5, including additional limitations to “a first and second
`arm rest,” which depended directly from claim 1, as obvious over Yanaka in
`view of Yamazaki. Id. at 76–77, 864.6 According to the Examiner,
`“Yamazaki teaches a child seat where the seat base further defines a first
`arm rest and a second arm rest.” Id. at 77. To be clear, although the
`Examiner acknowledged the “tensioned configuration” of Yamazaki, it was
`relied upon by the Examiner mainly for disclosure of a child safety seat for a
`vehicle having an angled “first arm rest and a second arm rest.” Id.
`To overcome the Examiner’s rejections, the Applicant amended
`claims 1 and 19 to include the subject matter of original dependent claim 3,
`indicated as allowable by the Examiner in the Office Action. Id. at 53–54,
`863. Claim 3 recited “a first arm rest and second arm rest,” and further
`recited, among other things, the limitations “wherein a top surface of each
`arm rest extends in a first horizontal plane” and “a bottom surface of the
`tensioning mechanism extends in a second horizontal plane.” Id. The
`addition of the subject matter of claim 3 to claims 1 and 19 apparently
`overcame not only the anticipatory references, but also the combination of
`Yanaka and Yamazaki by adding a “first horizontal plane” of the top surface
`of the arm rests and the specific relative structural arrangement between the
`
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`6 Original claim 5 became issued claim 4 in the ’022 patent. Unless
`otherwise noted, our claim numbers in this section refer to the original claim
`numbers in the prosecution of the application that became the ’022 patent.
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`“first horizontal plane” of the arm rests and a “second horizontal plane” of
`the tensioning mechanism. See id. at 61 (The response to the Office Action
`stated “Applicant has amended Claims 1 and 19 to include the subject matter
`of Claim 3, which the Examiner indicated as allowable.”).
`A Notice of Allowance followed this amendment, and the ’022 patent
`issued September 30, 2014. Id. at 18, 36–41; Ex. 2006, [45].
`’016 patent prosecution
`As previously explained, the application that became the ’016 patent
`
`is a continuation of the ’846 application. Ex. 1002, 2 (amending original
`Specification to include a cross-reference to the ’846 application).
`Remarkably different from the ’022 patent claims, the independent claims of
`the ’016 patent do not, and were never amended to, recite the limitations
`relating to “a first arm rest and a second arm rest,” as in the parent ’022
`patent prosecution. Ex. 1001, 14:31–64; see, e.g., Ex. 1002, 3 (Preliminary
`Amendment, amended claim 1); see also id. at 317. Applicant, in the
`Remarks section of the Preliminary Amendment, states:
`Applicant submits that the Office Action from the parent
`application rejected previous Claims 1-2, 5, and 19 as being
`anticipated or obvious over various references, including U.S.
`Patent No. 6,672,664 to Yanaka et al.; U.S. Patent No. 7,163,265
`to Adachi; U.S. Publication No. 2006/0091709 to Emmert; and
`U.S. Patent No. 6,508,510 to Yamazaki. Applicant submits that
`independent Claims 1 and 19 have been amended to further
`clarify the claimed invention and distinguish the cited art. Each
`of Claims 2-11 and 21-23 depend from one of independent
`Claims 1 and 19 and, thus, includes all of the recitations of its
`respective independent claim and additional claim recitations
`that are distinguishable over the cited art. Applicant submits that
`new Claims 21-23 contain further new claim limitations that
`were not recited in the claims of the parent application.
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`Ex. 1002, 10 (emphasis added). Beyond this somewhat self-serving
`statement, however, Applicant did not make clear specifically how or why
`the amendments in the Preliminary Amendment “further clarif[ied] the
`claimed invention and distinguish[ed] the cited art.” Id.
`The limitations added by this Preliminary Amendment to original
`claim 1 are fundamentally different from the amendments made in the ’022
`patent prosecution. The added limitations in the ’016 patent prosecution do
`not include “a first arm rest and a second arm rest,” nor any of the relative
`structural limitations with respect to the first and second horizontal planes of
`the arm rests and tensioning mechanism that the Examiner determined
`overcame the rejections with respect to the various references, including
`Yanaka and Yamazaki, in the ’022 patent prosecution. Compare Ex. 1002,
`3, 6‒7, with Ex. 2007, 53, 57‒58. Indeed, the claim amendments to the
`originally filed claims added in the Preliminary Amendment of the ‘016
`patent prosecution appear to describe mainly the relationship of the base of a
`child seat “positioned on the seat of the car.” Ex. 1002, 3, 6‒7.
`The Examiner subsequently issued an Office Action rejecting certain
`claims, including independent claim 1 and new independent claim 24, as
`anticipated by new references, each to Fritz et al. (U.S. Patent Nos.
`8,262,161 B2, 8,550,555 B2, and 8,690,244 B2, (collectively, ‘Fritz’)). Id.
`at 284. The Office Action also rejected other claims, including independent
`claim 19 and new independent claim 28, as obvious over Fritz. 7 Id. at 287.
`Similar to the parent prosecution, the Examiner indicated that other claims,
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`7 U.S. Patent Nos. 8,262,161 B2, 8,550,555 B2, and 8,690,244 B2 each
`claim priority under 35 U.S.C. § 119(e) back to the same U.S. Provisional
`Application No. 61/331,254, filed May 4, 2010.
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`including again claim 3, as well as new dependent claim 23, were objected
`to “but would be allowable if rewritten in independent form.” Id. at 287.
`This time, however, Applicant did not incorporate the subject matter of
`claim 3 into the independent claims. Rather, to overcome Fritz, Applicant
`added limitations from new claim 23 to all the independent claims:
`wherein, when in the first position, the tensioning mechanism
`defines a generally vertical orientation, and wherein, when in the
`second position, the tensioning mechanism defines a generally
`horizontal orientation.
`Id. at 317 (emphasis omitted), 321‒323. Apparently based on this
`amendment, the Examiner entered a Notice of Allowance and the ’016
`patent issued November 11, 2015. Id. at 334–338, 356.
`We next consider the Becton, Dickinson factors and the
`above-described evidence and facts with respect to the challenges asserted in
`this proceeding by Nuna Baby.
`2. The Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involved During Examination
`Britax’s arguments focus on the prosecution and references in the
`parent ’022 patent prosecution. Assessing the prior art considered by the
`Examiner in the ’022 patent prosecution, one of the asserted anticipatory
`references, Emmert, discloses a child safety seat that has a lap belt
`tensioning mechanism including projection 48 and belt deflector 46.
`Ex. 2001 ¶ 22, Figs. 1, 3, 4. Emmert explains that “the child support back
`20 is pivoted rearwardly so that the projection 48 engages with the radially
`outer end of the belt deflector 46, causing it to pivot to the position shown in
`FIGS. 3 and 4, thus tightening the lap strap 14 by deflecting it from its direct
`path between the lap belt guides 34 and 36.” Id. ¶ 22.
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`Still considering the ’022 patent prosecution, another anticipation
`rejection asserted, Yanaka, relied upon for disclosing all the structural
`elements of a child safety seat as recited in claims 1 and 2. Yanaka, for
`instance, teaches child safety seat 10 where lap belt section 16a and shoulder
`belt section 16b are both inserted through belt locking apparatus 20 attached
`to the base 23 of seat 10. Ex. 2002, 4:24–5:10. For the obviousness
`rejection of claim 5, including the arm rests, Yamazaki was relied upon as a
`secondary reference in combination with Yanaka. Yamazaki discloses a
`vehicle child safety seat having base 10 including lap belt tightening
`mechanism 11 and structure, i.e., side plates 10c, that were considered by the
`Examiner as “a first and second arm rests,” as recited in dependent claim 5
`of the ’022 patent prosecution. Ex. 1005, 3:19–40.
`Britax argues that the Yamazaki and Emmert references are
`essentially the same. We tend to agree. Both Yamazaki and Emmert teach
`what is essentially a pivoting lever on a seat base for tensioning a vehicle lap
`belt and securing the child safety seat to the vehicle seat. Compare
`Ex. 1005, Fig. 1, with Ex. 2001, Fig. 1. Having reviewed the references and
`their respective figures and descriptions, we find that, despite the use of the
`shark fin-shaped projection 48 in Emmert to push deflector 46 down, there is
`substantial similarity in the structure, function, and purpose of both
`mechanisms in these references with regards to securing a child safety seat
`to the vehicle car seat by tensioning a vehicle lap belt.
`We also find, as Britax argues, that Washimi, the secondary reference
`in the obviousness grounds asserted in this proceeding, and its disclosure of
`both lap and shoulder belts 66, 68, being stacked together and secured
`through a tensioning mechanism, i.e., protrusions 78 and locking members
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`86, is reasonably similar to Yanaka and its disclosure of both lap and
`shoulder belts being secured between a support (base) 12 and child seat body
`11. 8 Compare Ex. 1011, Figs. 2, 5, with Ex. 2002, Figs. 1, 6, 17. There are
`certainly differences in the actual tensioning mechanism structures between
`the references; for example, Yanaka teaches use of a rotating cam for
`engaging with, and allowing certain retraction movements in, the shoulder
`belt, which is not found in Washimi. Ex. 2002, 4:59–67, 5:28–34, Fig. 4.
`These differences are not, however, material because they are not relevant to
`the claims and the limitations at issue and therefore we do not find such
`differences material in determining the relative similarity of the references in
`this case to those of the ’022 and ’016 patent prosecutions.
`Overall, our evaluation indicates that Yamazaki’s child safety seat and
`lap belt tensioning device is substantially similar to that in Emmert. Also,
`relative to the claim limitations at issue and the stacking of both lap and
`shoulder belts for engagement by a tensioning device, Washimi is little
`different from Yanaka. Based on a comparison of the prior art references
`considered during prosecution of the ’022 patent and the current asserted
`references, we determine that this factor tends to weigh in favor of
`exercising our discretion not to institute.
`3. The Cumulative Nature of the Asserted Art and the Prior Art
`Evaluated During Examination
`As discussed above, Yamazaki was considered, to some extent
`substantively, by the Examiner in the context of the ’022 patent prosecution
`particularly in the obviousness rejection of original claim 5 in combination
`
`8 Our review does not reveal that Washimi, the secondary reference
`combined with Yamazaki in the challenges before us now, was ever cited or
`listed in an IDS in either the ’022 or ’016 patent prosecutions.
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`with the primary reference to Yanaka. According to the Examiner,
`Yamazaki discloses a child safety seat including structure that could be
`considered by one of ordinary skill in the art as first and second arm rests
`with angled surfaces as recited in original claim 5 of the application that
`became ’022 patent. Ex. 2007, 77. The Examiner stated that
`Yamazaki teaches a child seat where the seat base further defines
`a first arm rest and a second arm rest, wherein each arm rest
`defines an angled surface at 10d proximate the backrest position,
`wherein the angled surface is configured to adjacently engage
`and align the portion of the lap section and the portion of the
`shoulder section of the belt when the child seat is in the tensioned
`configuration.
`
`Id.
`
`On one hand, because of the similarities between Yamazaki and
`Emmert, it is reasonable to understand the subject matter of these references
`as cumulative from at least the broad disclosures of a child safety seat and
`generally similar tensioning mechanism that tension a lap belt with a hinged
`lever. On the other hand, the Examiner’s evaluation of Yamazaki was
`limited to applying Yamazaki’s arm rests and angled surfaces, as shown, for
`example, in Yamazaki’s Figure 1, to the “first arm rest and a second arm
`rest, wherein each arm rest defines an angled surface proximate the backrest
`position,” as recited, for example, in original claim 5 of the application that
`became the ’022 patent. Notably, as discussed above, this limitation is not
`found in the independent claims of the ’016 patent.
`Britax argues also that Washimi, the secondary reference in each
`asserted ground here, is cumulative to Yanaka, which was considered in the
`prosecution of the ’022 and ’016 patents. Prelim. Resp. 35–38. As
`discussed above, we find these references to be substantially similar and,
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`because Washimi and Yanaka teach such similar structure and functions
`with respect to tensioning both lap and shoulder belts, we determine that
`these references are generally subject-matter cumulative. This does not,
`however, end our inquiry into how these references were evaluated by the
`Examiner during the prior prosecution.
`We agree with Nuna Baby that the arguments in their Petition are non-
`cumulative as compared to the Examiner’s evaluation in the prosecution
`history of the ’022 patent. Pet. 90. This is not simply because none of
`Washimi, Parker, and Hutchinson, relied on in Nuna Baby’s Petition, were
`cited or listed in an IDS in the prior prosecutions. Id. A fact of the ’022
`patent prosecution that we cannot overlook is that the Examiner’s evaluation
`did not substantively extend to any arguments from the Applicant that the
`original claims were allowable over Yanaka (or Adachi, or Emmert) in the
`context of anticipation. This is because the Applicant never made any such
`argument or even challenged these references as not anticipating the original
`independent claims. See Ex. 2007, 61 (“Applicant has amended Claims 1
`and 19 to include the subject matter of Claim 3, which the Examiner
`indicated as allowable.”).
`We determine that although the references advanced here in this
`proceeding may be cumulative by way of subject matter as compared to
`those previously asserted by the Office, the Examiner’s reliance on
`Yamazaki in the ’022 patent prosecution did not extend to the scope of the
`claims at issue in the ’016 patent prosecution. The fact that Yamazaki was
`considered as a secondary reference in the ’022 patent prosecution and
`mainly for the limited purpose of the structure of the recited first and second
`arm rest limitations, which are not found in the independent claims of the
`
`17
`
`
`
`IPR2019-00663
`Patent 9,187,016 B2
`
`’016 patent, leads us to determine that this factor is neutral with respect to
`exercising our discretion to deny institution.
`4. The Extent to Which the Asserted Art Was Evaluated During
`Examination, Including Whether the Prior Art Was the Basis
`for Rejection
`Given our analysis of the two Becton, Dickinson factors above, it is
`fair to say that the primary reference asserted now, Yamazaki, was in part
`the basis for, and considered by the Examiner, at least for the obviousness
`rejection of dependent claim 5 in the ’022 patent prosecution, and also very
`similar to Emmert, which was one basis for anticipation of the original
`claims of the ’022 patent. We also recognize that the subject matter of
`Washimi, now asserted as a secondary reference in the obviousness grounds
`challenging the ’016 patent claims, reflects basically the same structure and
`function as that considered by the Examiner in applying Yanaka in the ’022
`patent prosecution.
`Despite the similarity of asserted references to the prior art evaluated
`in the underlying ’022 patent prosecution, the prior art and the subject matter
`they disclose were overcome by amendments to the independent claims of
`the ’022 patent that were not incorporated into the claims of the ’016 patent.
`As discussed above, those amendments did not find their way into the claims
`of the ’016 patent. Without the limitations of, inter alia, “a first arm rest and
`the second arm rest,” the scope of the claims in the ’016 patent is
`substantially different. Compare Ex. 1001, 14:31–64, with Ex. 2006, 14:20–
`49. Based on our review and comparison of the claims of the ’022 patent
`and ’016 patent, we determine that the claim scope is sufficiently different
`such that the Examiner’s consideration and evaluation of Emmert,
`Yamazaki, and Yanaka in the ’022 patent prosecution cannot, on the facts
`
`18
`
`
`
`IPR2019-00663
`Patent 9,187,016 B2
`
`before us here, be extended as a substantive evaluation of the claims that
`were before the Examiner in the ’016 patent prosecution and that are now
`challenged in this proceeding. We find this factor to weigh in favor of not
`exercising our discretion to deny institution.
`5. The Extent of the Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art
`Nuna Baby’s assertion of obviousness based on Yamazaki and
`Washimi may indeed have certain subject matter overlap with the
`Examiner’s application of Emmert, Yamazaki, and Yanaka in the ’022
`patent prosecution. We do not find, however, this factor persuasive towards
`exercising our discretionary denial of institution because the claims of the
`’016 patent and the challenges in this proceeding raise, at least to some
`extent, new arguments that have not been considered by the Office. For
`example, Emmert was applied as an anticipatory reference in the ’022 patent
`prosecution, and the obviousness challenge based on the combined teachings
`of Yamazaki and Washimi before us now has never been considered by the
`Office. Also, as discussed above, new arguments arise due to the significant
`difference in claim scope between the claims of the ’022 patent and the ’016
`patent, particularly where the independent claims of the ’016 patent do not
`include the limitations used to overcome the prior art applied in the ’022
`patent prosecution. This factor weighs in favor of the Board not exercising
`its discretion to deny institution.
`6. Whether Petitioner Has Pointed Out Sufficiently How the
`Examiner Erred in Its Evaluation of the Asserted Prior Art
`Nuna Baby argues that “the Examiner erred in allowing the ’016
`patent’s independent claims to issue based upon a minor amendment to the
`
`19
`
`
`
`IPR2019-00663
`Patent 9,187,016 B2
`
`independent claims.” Pet. 91 (citing Ex. 1002, 315–326). Specifically,
`Nuna Baby asserts that allowing claims with added limitations, in order to
`overcome Fritz et al. in the ’016 patent prosecution, was error because the
`claimed arrangement where “in the first position, the tensioning mechanism
`defines a generally vertical orientation, and wherein, when in the second
`position, the tensioning mechanism defines a generally horizontal
`orientation,” is taught, for instance, by Yamazaki. Id.
`Based on the fact that the Examiner applied Yamazaki only for its
`teachings of the arm rests in the ’022 patent prosecution, and based on the
`evidence of the particular amendments in the ’016 patent prosecution and the
`fact that neither the Applicant nor the Examiner substantively discussed or
`applied any relevant prior art besides Fritz et al. during the ’016 patent
`prosecution, we are inclined to infer that the complete teachings of
`Yamazaki were not fully evaluated during examination of the ’016 patent. 9
`Thus, this factor weighs in favor of the Board not exercising its discretion to
`deny institution.
`7. Weighing the Becton, Dickinson Factors
`Based on ou
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