O'Keeffe's, Inc.

Patent Trials and Appeals Board

Jul 16, 2020

PGR2019-00025 (P.T.A.B. Jul. 16, 2020)

Trials@uspto.gov Paper No. 50
571–272–7822 Date: July 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ELY HOLDINGS LTD.,
Petitioner,

v.

O’KEEFFE’s, INC.,
Patent Owner.
__________

PGR2019-00025
Patent 9,926,709 B1
_______________

Before HUBERT C. LORIN, MICHAEL W. KIM, and
ROBERT A. POLLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

Denying Patent Owner’s Revised Motion to Amend
35 U.S.C. § 328(a)

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I. INTRODUCTION
This is a Final Written Decision in a post grant review challenging the
patentability of claims 1–12 of U.S. Patent No. 9,926,709 B1 (Ex. 1001, “the
’709 patent”). We have jurisdiction under 35 U.S.C. § 6.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has demonstrated by a preponderance of the evidence that claims 1–12 are
unpatentable. We also deny Patent Owner’s Revised Motion to Amend,
whereby Patent Owner proposes to substitute claims 13–19 for claims 1–12,
and further deny Petitioner’s Motion to Strike.
A. Background
Ely Holdings Ltd., (“Petitioner”) filed a Petition requesting post grant
review of claims 1–12 of U.S. Patent No. 9,926,709 B1 (Ex. 1001, “the ’709
patent”). Paper 1 (“Pet.”). O’Keeffe’s, Inc. (“Patent Owner”) filed a
corrected Preliminary Response to the Petition (Paper 9, “Prelim. Resp.”).
On July 17, 2019, we instituted a post grant review, pursuant to 35
U.S.C. § 324(a). Specifically, we instituted a post grant review of claims 1–
12 on four asserted grounds of unpatentability. Paper 13 (“DI”).
After institution, Patent Owner filed a Patent Owner Response (Paper
23, “PO Resp.”); Petitioner filed a Corrected Reply (Paper 32, “Pet. Reply”);
Patent Owner filed a Sur-Reply (Paper 35, “PO Sur-reply”); and, Petitioner
filed a Sur-Sur-Reply (Paper 42, “Pet. Sur-Sur-Reply”) which, upon request,
we authorized Petitioner to file.1

1 Paper 40 (Order).
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Also, Patent Owner submitted a Motion to Amend (Paper 24, “MTA”)
and Petitioner filed a Corrected Opposition to the Motion to Amend (Paper
33, “MTA Opp.”). Patent Owner moved to cancel claims 1–12 and
substitute proposed claims 13–19. MTA 1–3. We provided preliminary
guidance on Patent Owner’s MTA (Paper 34, “Guidance”). We determined
that Patent Owner had shown a reasonable likelihood it had satisfied the
statutory and regulatory requirements associated with filing a motion to
amend but, based on the record before us at that time, it appeared that
Petitioner had shown a reasonable likelihood that proposed substitute claims
13–19 were unpatentable. Guidance 2–9.
In response to the Guidance, Patent Owner submitted a Revised
Motion to Amend (Paper 37, “RMTA”). In the Revised Motion to Amend,
Patent Owner again moves to cancel claims 1–12 and substitute proposed
claims 13–19. Other than rearranging the elements, substitute proposed
claims 13–19 in the Revised Motion to Amend are the same as those in the
original Motion to Amend. Petitioner filed an Opposition to the Revised
Motion (Paper 41, “RMTA Opp.”), Patent Owner filed a Reply (Paper 43,
“RMTA Reply”), 2 and, Petitioner filed a Sur-Reply (Paper 49, “RMTA Sur-
Reply”).
Neither party requested an oral hearing.
B. Related Proceedings
Petitioner notifies us that “[a]s of the filing date of this Petition,
Petitioner is unaware of any matters involving the ’709 patent pending in

2 Patent Owner also filed an Amended Reply to Petitioner’s Opposition to
the Revised Motion (Paper 44), which it subsequently withdrew (Paper 45)
and has not been considered for purposes of this Decision.
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any United States court or administrative agency.” Paper 1, 1. Patent
Owner does not contest this assertion.
C. The ’709 patent (Ex. 1001)
1. Disclosure
The ’709 patent, titled “Mechanism for Supporting and Positioning a
Glass Floor Unit,” relates generally to a “mechanism for supporting and
positioning a glass floor unit relative a base . . . .” Ex. 1001, code (54),
1:14–15.
Figure 2 of the ’709 patent (reproduced below) shows adjusting
mechanism 10 in use with glass floor units 14, 16.

Figure 2 of the ’709 patent depicts a building floor having glass floor units
14, 16 installed comprising adjusting mechanism 10 for supporting and
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positioning the glass floor units relative to base 32 resting on foundation or
ground surface 18.
[T]he following description with respect to glass floor unit 14 also
applies to glass floor unit 16. Glass floor unit 14 includes an upper
portion 20 which consists of multi-laminate glass of durable
construction. Lower or bottom portion 22 is fashioned with fire-rated
glass which includes a plurality of glass layers 24 with fire resistant gel
layers 26 therebetween. Glass floor units 14 and 16 are available as
120 minute fire rated SL-II-XL units available from Saftifirst of
Brisbane, Calif.
Id. at 2:46–54.
Adjusting mechanism 10 of Figure 2 is “employed with a base 32 that
rests on foundation or ground surface 18.” Id. at 2:57–59. It is shown in
more detail in Figure 3, reproduced below.

Figure 3 of the ’709 patent depicts in detail adjusting mechanism 10 for
supporting and positioning glass floor units 14, 16.
As the patent explains:
[Adjusting m]echanism 10 includes receiver 54 having an internally
threaded surface 56. Receiver 54 is generally cylindrical and is welded
or otherwise fastened to metallic plate 44. In addition, mechanism 10
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includes a support 58 which may be in the form of a flattened or sheet-
like member. As shown in FIG. 3, support 58 has extended into contact
with the undersurface 60 of upper portion 20 of glass floor unit 14. A
cavity 62 within glass floor unit 14 allows the extension of support 58
into this position.
. . . . Adjuster 64 may take the form of a bolt 66 having an external
thread 68. Bolt 66 extends through support 58. Nut 70 is fixed to bolt
66 such that bolt 66 and nut 70 are allowed to turn relative to support
58. Thus, nut 70 and bolt 66 serves as a connector 71 linking support
58 to adjuster 64. Needless to say, threaded surface 68 of bolt 66
threadingly engages threaded surface 66 of receiver 54 in this regard.
Directional arrow 72 indicates the ability of adjuster 66 to turn. Such
turning of bolt 66 in a counter-clockwise direction will exert an upward
force on glass floor units 14 and 16 causing an upward deflection of
walking surface 30. Likewise, the turning of adjuster bolt 66 in a
clockwise direction will tend to cause a slump or depression of walking
surface 30.
Id. at 3:5–28. In this way, “adjuster [64] produces relative movement
between the receiver [54] and the adjuster.” Id. at 1:34–35. The “connector
[71] links the support [58] to the adjuster in order to effect simultaneous
movement of the support with the relative movement between the receiver
and the adjuster.” Id. at 35–38. In so doing, the mechanism supports and
positions the glass floor units relative to the base. Id. at 1:14–15.
2. Claims
The ’709 patent has 12 claims, all of which are challenged in the
Petition. Claim 1 is the sole independent claim. Claims 2–12 depend from
claim 1. Independent claim 1, reproduced below, is illustrative.
1. A mechanism forming a floor structure resting on a foundation,
comprising:
a glass floor unit;
a base, said base positioned to contact the foundation and
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extending therefrom without relative movement between said base and
the foundation;
a support, said support positioned to contact the glass floor unit;
a receiver, said receiver configured for extension from said base
and fixation to said base to prevent relative movement between said
receiver and said base;
an adjuster, said adjuster configured to interact with said receiver
and to produce relative movement between said receiver and said
adjuster; and
a connector, said connector linking said support to said adjuster
to effect simultaneous movement of said support with said relative
movement between said receiver and said adjuster, said movement of
said support exerting a force on said glass floor unit to effect relative
movement between said glass floor unit and said base contacting said
foundation.
Ex. 1001, 4:18–38.
D. Asserted References
Petitioner relies on the following references:

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Name Reference Ex. No.
Webcor/Obayashi
Joint Venture
a) groundbreaking_press_release
b) http://www.webcor-
obayashi.com/AboutUs.html
c) TG08-7_RFP_Advertisement
d) RFP_Manual_Rev_19
e) “Bid Package TG08.7 Addendum No. 4”
f) “120 Minute Fire Resistive Floor System”
g) https://safti.com/press-release/october-15-
2017-safti-first-completes-6-million-
expansion-in-u-s-manufacturing-operations/
h) https://safti.com/press-release/safti-first-
receives-u-s-patent-for-fireresistive-glass-
floor-system-up-to-2-hours/
i) GPX-FireFloor-System-60-to-120-Specs
j) GPX-FireFloor-System
a) 1004
b) 1005

c) 1006
d) 1007
e) 1008
f) 1009
g) 1010

h) 1011

i) 1012
j) 1013
Rae Patent No. 7,694,475 B2 1014
DE759 German Gebrauchmusterschrift DE 202 02 759 U1 1015
DE230 German Gebrauchmusterschrift DE 202 06 230 U1 1016
Petitioner also relies on the Declaration of Tim Macfarlane (Ex. 1003)
as support for the various contentions.
E. Grounds Asserted
Petitioner contends that claims 1–12 of the ’709 patent are
unpatentable under the following grounds:

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Ground Basis Prior Art Claims
I § 102 Webcor/Obayashi Joint Venture 1–12
II § 103 Rae and DE759 1–12
III § 103 DE230 and Rae 1–12
IV § 112(b) 1, 7, 8
Pet. 3–4.
II. ANALYSIS
A. Principles of Law
1. Burden
“[T]he petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a) (3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden of persuasion never shifts to Patent Owner. See
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (discussing the burden of proof in inter partes review).
2. Anticipation – On Sale
To anticipate a claim under 35 U.S.C. § 102, “a single prior art
reference must expressly or inherently disclose each claim limitation.”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Accordingly, “‘the dispositive question regarding anticipation [i]s whether
one skilled in the art would reasonably understand or infer from the [prior
art reference’s] teaching’ that every claim element was disclosed in that
single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d
1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d
388, 390 (Fed. Cir. 1991)).
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Section 102(b) bars patentability for inventions “on sale in this
country” more than one year before the application's filing date. 35 U.S.C.
§ 102(b) (2002).
An invention is “on sale” under § 102(b) when it is “the subject of a
commercial offer for sale,” and is ready for patenting. Pfaff v. Wells Elec.,
Inc., 525 U.S. 55, 67 (1998). “‘The overriding concern of the on-sale bar is
an inventor’s attempt to commercialize his invention beyond the statutory
term.’” Medicines Company v. Hospira, Inc., 827 F.3d 1363, 1377 (Fed.
Cir. 2016) (quoting Netscape Commc’ns. Corp. v. Konrad, 295 F.3d 1315,
1323 (Fed. Cir. 2002)). “[T]he intent of [§ 102(b)] is to preclude attempts
by the inventor or his assignee to profit from commercial use of an invention
for more than a year before an application for patent is filed.” D.L. Auld Co.
v. Chroma Graphics Corp., 714 F.2d 1144, 1147 (Fed. Cir. 1983).
As our reviewing court has held:
To determine whether such a commercial sale or offer for sale has
occurred, we look to how those terms are defined in the Uniform
Commercial Code. Id. at 1365, 1375 (“[T]he Uniform Commercial
Code describes a ‘sale’ as ‘the passing of title from the seller to the
buyer for a price.’ U.C.C. § 2-106(1).”); Group One, Ltd. v. Hallmark
Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001) (“[A] commercial
offer for sale [under § 102(b) is] one which the other party could make
into a binding contract by simple acceptance (assuming consideration)
. . . .”).
BASF Corporation v. SNF Holding Company, 955 F.3d 958, 969 (Fed. Cir.
2020). Our reviewing court has further explained that:
Only an offer which rises to the level of a commercial offer for sale,
one which the other party could make into a binding contract by simple
acceptance (assuming consideration), constitutes an offer for sale under
§ 102(b).
Group One, 254 F.3d at 1048.
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2. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which that
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved based on underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) objective evidence of nonobviousness, if
present. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In analyzing the obviousness of a combination of prior art elements, it
can be important to identify a reason that would have prompted one of skill
in the art “to combine . . . known elements in the fashion claimed by the
patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the
specific subject matter of a challenged claim is not necessary to establish
obviousness. Id. Rather, “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” Id. at 420.
Accordingly, a party that petitions the Board for a determination of
unpatentability based on obviousness must show that “a skilled artisan
would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal
quotation marks and citations omitted). Under the proper inquiry,
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“obviousness cannot be avoided simply by a showing of some degree of
unpredictability in the art so long as there was a reasonable probability of
success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
3. Definiteness
In any patent, “[t]he specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter
which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
§ 112(b) (2012). “A decision on whether a claim is indefinite . . . requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” MPEP
§ 2173.02 (9th ed. rev. 08.2017 Jan. 2018). “The claims, when read in light
of the specification and the prosecution history, must provide objective
boundaries for those of skill in the art.” Interval Licensing, LLC v. AOL,
Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
We analyze the instituted grounds of unpatentability in accordance
with these principles.
B. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).
Petitioner contends, inter alia, that
[i]n this case, the ‘709 Patent is directed to a floor structure that
includes a glass floor and an adjustable support mechanism. Petitioner
therefore submits that a person of ordinary skill should have at least
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some familiarity with structural glass and glazing applications
involving structural glass, as well as the engineering and/or design
thereof. Ex. 1003 at ¶ 40. Accordingly, Petitioner submits that a person
of ordinary skill in the art of the ’709 Patent as of July 1, 2016, would
have had at least a bachelor of science or engineering degree in civil
engineering, such as structural engineering or a related technical field,
and either an advanced degree (such as a masters) or an equivalent
amount of work experience, i.e.[,] 2–3 years, in an area relating to
structural glass and/or its engineering and/or design. Id.
Pet. 9–10.
Patent Owner contends:
As the ’709 patent includes structural components and an adjustment
mechanism for a floor structure, it is submitted that a person of ordinary
skill in the art would possess technical knowledge in building and
support mechanisms. Also, a person of ordinary skill in the art would
have at least a bachelor in science degree in a mechanical or structural
engineering and work experience in the design and manufacturing of
buildings and support mechanisms.
PO Resp. 2.
Based on the positions of Petitioner and Patent Owner, we find mostly
agreement as to the level of skill of such ordinarily skilled artisans and we
are persuaded that one of ordinary skill in the art at the time of the invention
would have had a bachelor of science degree in structural engineering or a
related technical field, as well as some substantive experience. This would
not change under either party’s definition of the person of ordinary skill.
C. Claim Construction
For petitions filed on or after November 13, 2018, “[claims] of a
patent . . . shall be construed using the same claim construction standard that
would be used to construe the [claims] in a civil action under 35 U.S.C.
§ 282(b), including construing the [claims] in accordance with the ordinary
and customary meaning of such claims as understood by one of ordinary
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skill in the art and the prosecution history pertaining to the patent.” See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
Furthermore, only those terms that are in controversy need to be
construed, and only to the extent necessary to resolve the controversy. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
The term “connector” in claim 1 is in controversy.
In Petitioner’s view, the claim term “connector” is ambiguous. Pet.
10. According to Petitioner, it could cover either a threaded nut or the
combination of a nut and bolt. Petitioner contends that:
It is not possible for the claimed connector to simultaneously be both a
threaded nut (as described in the Summary) and a nut and bolt together
(as described in the Detailed Description). There is, however, nothing
else in the specification to determine which of these two possibilities is
the claimed connector. Accordingly, for purposes of this petition,
Petitioner will use both interpretations of connector disclosed in the
’709 Patent when comparing the prior art to the challenged claims.
Id. at 11. Petitioner’s view forms the basis for Ground IV challenging claim
1 as indefinite.
Patent Owner argues that “a ‘connector’ may include multiple
elements functioning as something that connects.” PO Resp. 9.
As we explained in the Institution Decision and repeat below in
analyzing Ground IV, “[t]he term ‘connector’ is indeed broad in scope and,
as Petitioner explains, it could cover either a threaded nut or the combination
of a nut and bolt. But that does not alone make the claim indefinite.” DI 27.
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The parties merely reiterate arguments made previously prior to institution.
PO Resp. 9; Pet. Reply 16. After reevaluating them anew, our analysis is the
same.
Accordingly, in evaluating the challenges to the patentability of claim
1, we determine that the claim term “connector” encompasses either a
threaded nut or the combination of a nut and bolt.
We do not find it necessary to construe any other claim terms for
purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy’” (citations omitted)). Other constructions are treated in context
when analyzing the parties’ contentions concerning the prior art.
D. Overview of the Prior Art References
1. Webcor/Obayashi Joint Venture (“WOJV”)
Petitioner argues that the claimed invention is anticipated by the offer
for sale of the GPX FireFloor System by Safti First in a proposal to the
Webcor/Obayashi Joint Venture (“WOJV”), the general contractor and
construction manager for the Transbay Transit Center project in San
Francisco, California. Pet. 11–13. Petitioner relies on 10 pieces of
documentary evidence, separately identified as parts a through j and entered
as Exhibits 1004–1013, respectively. Pet. 11–13, 18–19.
a) groundbreaking_press_release_2010-0811
Groundbreaking_press_release_2010-0811 (Ex. 1004) discloses the
groundbreaking “Transbay Transit Center –the northern terminus for the
California High Speed Rail system and a multi-modal facility that will
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accommodate eleven transit operators and serve more than 45 million
passengers a year.” Id. at 1.
b) http://www.webcor-obayashi.com/AboutUs.html
http://www.webcor-obayashi.com/AboutUs.html (Ex. 1005) discloses,
inter alia, that “Webcor-Obayashi Joint Venture is a seamless combination
of two sophisticated and well respected builders that are financially strong
and provide to the Transbay Transit Center project the benefits of a true
builder.” Id. at 1.
c) TG08-7_RFP_Advertisement
TG08-7_RFP_Advertisement (Ex. 1006) discloses, inter alia, that
“Webcor/Obayashi Joint Venture seeks responses to a Request for Proposals
(RFP) from Trade Subcontractors interested in submitting a proposal for the
TG08.7 Glass Floors Construction Services trade package on the contract for
the Transbay Transit Center (TTC) Project located in San Francisco,
California.” Id. at 1.
d) RFP_Manual_Rev_19
RFP_Manual_Rev_19 (Ex. 1007) is a “Transbay Transit Center
Project Request for Proposals Manual,” dated January 13, 2015, that
provides project information, instructions to proposers, trade subcontractor
requirements, and forms.
e) “Bid Package TG08.7 Addendum No. 4”
“Bid Package TG08.7 Addendum No. 4” (Ex. 1008) includes, inter
alia, drawings of “SAFTIFIRST 120 MIN. FIRE–RATED FLOOR.” Id. at
12–25.
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f) “120 Minute Fire Resistive Floor System”
“120 Minute Fire Resistive Floor System” (Ex. 1009) is a set of three
drawings of a “120 MINUTE FIRE RESISTIVE FLOOR SYSTEM.” Id. at
1–3.
g) https://safti.com/press-release/october-15-2017-safti-
first-completes-6-million-expansion-in-u-s-
manufacturing-operations/
https://safti.com/press-release/october-15-2017-safti-first-completes-
6-million-expansion-in-u-s-manufacturing-operations/ (Ex. 1010) discloses,
inter alia, that “SAFTI FIRST, leading USA-manufacturer of advanced fire
rated glass and framing systems, recently completed a $6 million dollar
expansion in the company’s manufacturing facility in Merced, California.”
Id. at 1.
h) https://safti.com/press-release/safti-first-receives-u-s-
patent-for-fireresistive-glass-floor-system-up-to-2-hours/
https://safti.com/press-release/safti-first-receives-u-s-patent-for-
fireresistive-glass-floor-system-up-to-2-hours/ (Ex. 1011) discloses, inter
alia, that “SAFTI FIRST RECEIVES U.S. PATENT FOR FIRE
RESISTIVE GLASS FLOOR SYSTEM UP TO 2 HOURS” and “USA-
made GPX FireFloor System Receives US Patent 9,926,709 from the United
States Patent and Trademark Office.” Id. at 1.
i) GPX-FireFloor-System-60-to-120-Specs
GPX-FireFloor-System-60-to-120-Specs (Ex. 1012) discloses, inter
alia, a “Guide Specification System prepared as an aid to specifiers in
preparing written construction documents” that includes a specification for
glass floor and framing of the GPX FireFloor System. Id. at 1.
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j) GPX-FireFloor-System_June-2017
GPX-FireFloor-System_June-2017 (Ex. 1013) is a single–page
product sheet detailing product advantages and specifications for the GPX
FireFloor System.
2. Rae
Rae (Ex. 1014) describes a fire rated glass flooring
comprising a first layer of glass and a second layer of glass, the two
layers being positioned one above the other and separated by at least
one load transferring means together with a structural frame supporting
the flooring system, wherein the first layer of glass is a structural glass
and the second layer of glass is a fire rated glass.
Ex. 1014, 1:36–43.
3. DE759
DE759 (Ex. 1015) “relates to a hollow floor, in particular a raised or
hollow floor . . . and to a stand for such a floor system.” Ex. 1015, 1:2–3.
4. DE230
DE230 (Ex. 1016) “relates to a hollow floor, in particular a raised or
hollow floor . . . and to a stand, a floor panel, a fire protection panel and a
fire protection pan for such a floor system.” Ex. 1016, 1:2–4.
E. Ground I
Petitioner challenges claims 1–12 as anticipated under 35 U.S.C.
§ 102(a) (1) by the offer for sale of the GPX FireFloor System by Safti First
in a proposal to WOJV. Pet. 3, 11–20.
“[T]he on–sale bar applies when two conditions are satisfied before
the critical date. First, the product must be the subject of a commercial offer
for sale. . . . Second, the invention must be ready for patenting.” Pfaff v.
Wells Electronics, Inc., 525 U.S. 55, 67 (1998).
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The ’709 patent has a filing date of July 1, 2016. Ex. 1001, code (22).
Thus, July 1, 2015, is the critical date for § 102(b)’s on-sale bar.
1. The Product Allegedly Offered for Sale to WOJV
(a) Background
According to Petitioner, the following events transpired:
• “On or around August 11, 2010, construction commenced on the
Transbay Transit Center (‘TTC’) project in San Francisco, California.
Ex. 1004. The Webcor/Obayahsi Joint Venture (‘WOJV’) was
identified as the General Contractor and Construction Manager for the
TTC project. Ex. 1005.” Pet. 11.

• “On or around September 23, 2014, WOJV issued a notice to trade
subcontractors that it was seeking responses to Request for Proposals
(‘RFP’) for the TG08.7 Glass Floors Construction Services trade
package. Ex. 1006.” Id. at 12.

• “WOJV also issued a ‘Transbay Transit Center Project Request for
Proposals Manual’ and multiple revisions thereto, including a revision
(Rev. 19) dated January 13, 2015 (Ex. 1007; ‘the RFP Manual’).
Pursuant to this RFP Manual, submission of a proposal constituted
certain irrevocable covenants and representations by the subcontractor,
including: (i) that the response to the RFP described all the terms and
conditions necessary for completion of the entire Glass Floors
package; (ii) that the price offered in the proposal was a final and fixed
price for completion of the entire Glass Floors package; and (iii) that
the subcontractor accepted all of the terms and conditions of WOJV
‘Long Form Subcontract’ without exception. Id. at 11.” Id.

• “On or around March 5, 2015, WOJV issued ‘Bid Package TG08.7
Addendum No. 4’ (Ex. 1008; ‘Addendum No. 4’) setting March 10,
2015 as the deadline for submission of proposals. Addendum No. 4
also included as an attachment a ‘Form 00 04 41 Pre-Bid Request for
Substitution’ dated February 16, 2015. Ex. 1008 at 6––25. This
Request for Substitution was submitted by Safti First Corporation of
Brisbane, California. Id. at 6.” Id.

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• “In the Request for Substitution, Safti First sought permission to
replace the glass specified in the original Bid Package with the ‘Safti
First 2-HR Fire Resistive Floor System.’ Id. Safti First also identified
this proposed substitution as ’[t]he GPX 120 minute glazed floor
system’ and as ‘SAFTIFIRST 120 MIN. FIRERATED FLOOR.’ (Id.
at 11; 12) Although Safti First’s Request for Substitution was not
approved by WOJV, it nevertheless represented an offer by Safti First
to sell its ‘GPX 120 minute glazed floor system’ to WOJV. Safti
First’s 120 minute fire resistive floor system is and always has been
marketed and sold by Safti First as the ‘GPX FireFloor System.’
Ex. 1009.” Id. at 13.
Petitioner also cites “a press release archived on Safti First’s website [that]
confirms that the GPX FireFloor System was being actively marketed and
offered for sale by Safti First prior to October 15, 2015” and asserts that,
according to “a press release dated April 25, 2018 archived on Safti First’s
web site, the GPX FireFloor System is covered by the claims of the ’709
Patent.” Id. (citing Exs. 1010, 1011).
According to Petitioner, this “documentary evidence, including Safti
First’s press releases and proposal to WOJV, therefore shows that Safti First
was offering the GPX FireFloor System for sale as early as March 10,
2015.” Id.
Patent Owner has provided no argument challenging Petitioner’s
contention that “Safti First was offering the GPX FireFloor System for sale
as early as March 10, 2015” (id.). See generally PO Resp.
We review the relied–upon documentary evidence to determine
whether it supports Petitioner’s position that a GPX FireFloor System
manufactured by Safti First was the subject of a commercial offer for sale on
or before the critical date of July 1, 2015. We will focus on “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008) as representing the alleged sale to
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WOJV because it describes a GPX FireFloor System called “120 Minute
Fire Resistive Floor System,”3 and Petitioner relies on Exhibit 1008 as an
offer for sale by Safti First of that FireFloor System to WOJV.
(b) whether the 120 Minute Fire Resistive Floor System
was the subject of “a commercial offer for sale”
“Bid Package TG08.7 Addendum No. 4” (Ex. 1008) includes a
completed form entitled “00 04 41 – Pre–Bid Request for Substitution.” Ex.
1008 at 6–7. The completed “00 04 41 – Pre–Bid Request for Substitution”
form is dated “2/16/2015” and states that the proposed substitution is
“SAFTI FIRST 2–HR FIRE RESISTIVE FLOOR SYSTEM,” manufactured
by “SAFTI FIRST . . . [of] Brisbane CA.” Id. at 6. It states that product
data and drawings are attached (id. at 7), which are:
• a chart entitled “120 Minute Fire Resistive Floor Comparison”
comparing features of Safti First’s glass floor to those of TGP (id. at
8–9);
• a page entitled “Changes and Modification to Other Work” providing
more details about its “GPX 120‐minute glazed floor system” (id. at
11); and,
• 14 pages of drawings, each labeled “120 MIN. FIRE–RATED
FLOOR” (id. at 12–25).
The “Bid Package TG08.7 Addendum No. 4” indicates that WOJV
rejected the substitution. Id. at 5. The “Bid Package TG08.7 Addendum

3 The “Bid Package TG08.7 Addendum No. 4” calls the glass floor system
by various names: “Safti First 2–HR Fire Resistive Floor System” (Ex.
1008, 6); “120 Minute Fire Resistive Floor” (id. at 8); “GPX 120‐minute
glazed floor system” (id. at 11); and, “120 MIN. FIRE–RATED FLOOR”
(id. at 12–25). Petitioner truncates it to “GPX FireFloor System” (see e.g.,
Pet. 17) and Patent Owner calls it “the Safti First 120 min fire-rated floor”
(PO Resp. 3). We will use “120 Minute Fire Resistive Floor System” (id. at
8).
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No. 4” states “[p]lease refer to the attached comments on technical issues
found within the information provided.” Id. This statement apparently
refers to various comments written in red on the completed “00 04 41 – Pre–
Bid Request for Substitution” form. Id. at 6, 8, and 9.
According to Petitioner, “[a]lthough Safti First’s Request for
Substitution was not approved by WOJV, it nevertheless represented an
offer by Safti First to sell its ‘GPX 120 minute glazed floor system’ to
WOJV.” Pet. 13.
For the following reasons, the evidence supports Petitioner’s position.
The “Form 00 04 41 Pre–Bid Request for Substitution” indicates that,
Safti First requested to replace the TGP glass system specified in the original
Bid Package with a “120 Minute Fire Resistive Floor System” on Feb. 16,
2015. Ex. 1008, 6–25. Safti First requested the substitution during the
bidding period, and stated that:
During the bidding period, a proposed change by a bidder . . . is
considered a pre–bid request for substitution. . . . During the bidding
period and prior to the deadline for the submission of [questions on bid
documents] Bidders may submit a request for a substitution of an “or
equal” product . . . .
Id. The substitution represented an intention by Safti First to profit from
commercial use of its “120 Minute Fire Resistive Floor System” via the TTC
project. Had WOJV not rejected Safti First’s requested substitution, Safti
First’s “120 Minute Fire Resistive Floor System” would have been included
in the bidding process. Simple acceptance (assuming consideration) of the
bid by WOJV would have formed a binding contract between Safti First and
WOJV. Consequently, the substitution constituted a commercial offer for
sale. Since the substitution occurred on or before the critical date of July 1,
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2015, Safti First’s “120 Minute Fire Resistive Floor System” as described in
“Bid Package TG08.7 Addendum No. 4” (Ex. 1008, 6–25) was “on sale” for
§ 102(b) purposes.
Thus, based on our review of the evidence of record, we are persuaded
that Safti First’s “120 Minute Fire Resistive Floor System” was the subject
of a commercial offer for sale.
(c) whether the invention was “ready for patenting”
(1) ready for patenting
Petitioner contends that:
First, Safti First offered the GPX FireFloor System for sale at least as
early as March 10, 2015, but the Patent Owner did not file the
application for the ’709 Patent until July 1, 2016. Second, the GPX
FireFloor System was ready for patenting before that date. See Cargill,
Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1368 (Fed. Cir. 2007) (“An
invention can be found to be ‘ready for patenting’ in at least the
following ways: by proof that it was reduced to practice, or by proof
that the inventor had prepared drawings or other descriptions of the
invention that were sufficiently specific to enable a person skilled in the
art to practice the invention.”).
Pet. 14. According to Petitioner,
as a part of its offers for sale in 2015, Safti First represented to WOJV
and to its other customers and potential customers that the GPX
FireFloor System would work for its intended purpose. In its Request
for Substitution, for example, Safti First not only contended that the
GPX FireFloor System was suitable for use as the glass flooring in the
TTC, but also that the GPX FireFloor System was superior to the
product designated in the documents provided by WOJV in connection
with the Request for Proposals bidding process. See Ex. 1008 at 6, 8–
9.
The GPX FireFloor System was therefore ready for patenting at
least by March 10, 2015.
Pet. 19–20.
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Patent Owner has provided no argument challenging Petitioner’s
contention that Safti First’s GPX FireFloor System was ready for patenting.
We have reviewed the evidence and find that it supports Petitioner’s
position. We find that the prepared drawings and descriptions of Safti
First’s “120 Minute Fire Resistive Floor System” in the “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008, 8–25) are sufficiently specific to
enable a person skilled in the art to practice Safti First’s “120 Minute Fire
Resistive Floor System.”
Thus, based on our review of the evidence of record, we are persuaded
that Safti First’s “120 Minute Fire Resistive Floor System” was ready for
patenting.
Accordingly, both Pfaff conditions are satisfied here and the on–sale
bar is triggered by the offer for sale of Safti First’s “120 Minute Fire
Resistive Floor System” in “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008).
If the claimed invention reads on Safti First’s “120 Minute Fire
Resistive Floor System” as offered in “Bid Package TG08.7 Addendum No.
4” (Ex. 1008), then § 102(b) bars its patentability for having been “on sale in
this country” on or before the critical date of July 1, 2015.
The parties agree that the drawings of Safti First’s “120 Minute Fire
Resistive Floor System” in “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008, 12–25) do not show “an adjuster” as claimed. See PO Resp. 5
(“the adjustment mechanism of the ’709 patent is not shown or offered in the
Bid Package TG008.7 Addendum No. 4 (Ex. 1008)”) and Pet. Reply 3
(“Patent Owner is correct that the Bid Package itself does not show an
adjustment mechanism”). Accordingly, it is undisputed that “Bid Package
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TG08.7 Addendum No. 4” (Ex. 1008) does not expressly describe the
claimed invention.
[a] “120 Minute Fire Resistive Floor
System” (Ex. 1009)
According to Petitioner, the “120 Minute Fire Resistive Floor System”
described in the “Bid Package TG08.7 Addendum No. 4” (Ex. 1008) refers
to a “GPX FireFloor System” as marketed and sold by Safti First. Petitioner
asserts that “Safti First’s 120 minute fire resistive floor system is and always
has been marketed and sold by Safti First as the ‘GPX FireFloor System.’
Ex. 1009.” Pet. 13.
In the Institution Decision, we stated that we were preliminarily
“persuaded that Petitioner’s position is sufficiently supported by the
evidence.” DI 14. We observed that:
The phrase “SAFTIFIRST 120 MIN. FIRE–RATED FLOOR” is
expressly recited on, for example, page 12 of the “Bid Package TG08.7
Addendum No. 4” (Ex. 1008).
The phrase “120 MINUTE FIRE RESISTIVE FLOOR
SYSTEM” is present at the top of every page of “120 Minute Fire
Resistive Floor System” (Ex. 1009). At the bottom of each of those
pages, this is included:

In our view, this suggests that the “120 MINUTE FIRE
RESISTIVE FLOOR SYSTEM” described by the drawings in the “120
Minute Fire Resistive Floor System” (Ex. 1009) is a GPX FireFloor
System. Given the similarly–labelled “SAFTIFIRST 120 MIN. FIRE–
RATED FLOOR” of the “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008), we are persuaded, on this record, that it, too, is a GPX
FireFloor System.
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DI 14.
We have reviewed Patent Owner’s Response but do not see that
Patent Owner has presented any argument challenging our view that the
GPX FireFloor system described in “120 Minute Fire Resistive Floor
System” (Ex. 1009) appears to refer to the same 120 Minute Fire Resistive
Floor System described in “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008).
The Response focuses mainly on the lack of an express disclosure of
an adjuster in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008), a point
that is not in dispute.
For example, Patent Owner provides an annotated version of the
drawing on page 17 of “Bid Package TG08.7 Addendum No. 4” (Ex. 1008),
reproduced below.

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Resp. 4, The preceding image is Patent Owner’s annotated version of page
17 of Exhibit 1008. Id.
According to Patent Owner,
[a]s may be seen from this drawing, a beam supports the glass floor unit
and does not include an adjustment mechanism of any sort and certainly
does not show the adjustment mechanism of the ’709 patent.
PO Resp. 3–4. But it is not disputed that “Bid Package TG08.7 Addendum
No. 4” (Ex. 1008) does not illustrate an adjustment mechanism. See PO
Resp. 4–6 (similar arguments) and Pet. Reply 3 (“Patent Owner is correct
that the Bid Package itself does not show an adjustment mechanism.”).
Patent Owner also argues that “120 Minute Fire Resistive Floor
System” (Ex. 1009) cannot “serve as an offer for sale.” See PO Resp. 5:
Although this exhibit is not dated, the designation “patent pending”
would indicated that it is dated on or after the filing of the patent
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application 15/200,956, which later issued as U.S. Patent 9,926,709.
Thus, plaintiff's GPX FIRE FLOOR, PATENT PENDING (Ex. 1009)
cannot, in and of itself, serve as an offer for sale, but only confirms that
a patent application has been filed.
See also PO Sur-reply 5 (similar argument).
But the basis of Petitioner’s challenge to the patentability of the
claims is WOJV, and more particularly “Bid Package TG08.7 Addendum
No. 4” (Ex. 1008), not the “120 Minute Fire Resistive Floor System”
document (Ex. 1009). Pet. 11–13.
It is true that the words “Patent Pending” appear on each page of “120
Minute Fire Resistive Floor System” (Ex. 1009). Nonetheless, it is the “120
Minute Fire Resistive Floor System” described in “Bid Package TG08.7
Addendum No. 4” (Ex. 1008) that was the subject of a commercial offer for
sale on or before the critical date of July 1, 2015. As we stated in the
Institution Decision in responding to a similar argument made by Patent
Owner in the Preliminary Response, even if “120 Minute Fire Resistive
Floor System” (Ex. 1009) “describe[s] [a] later description[ ] of the system
shown in the ʼ709 Patent dated well beyond the statutory on–sale bar under
35 U.S.C. §102 (a) (1)” (Prelim. Resp. 2–3), “the fact that the description is
later in time is not dispositive of our determination that Petitioner
sufficiently demonstrates that the “SAFTIFIRST 120 MIN. FIRE–RATED
FLOOR” of the “Bid Package TG08.7 Addendum No. 4” (Ex. 1008)” is a
GPX FireFloor System.” DI 18 (emphasis original).
Based on our review of the evidence of record, Petitioner has shown
that the GPX FireFloor System that is described in “120 Minute Fire
Resistive Floor System” (Ex. 1009) is the same as the “120 Minute Fire
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Resistive Floor System” described in “Bid Package TG08.7 Addendum No.
4” (Ex. 1008).
Therefore, we find that Exhibit 1009 describes the GPX FireFloor
system offered for sale in Ex. 1008.
[b] “Transbay Shop Drawings” (Ex. 1020))
Background.
During trial, Petitioner filed a motion (“Motion to Modify Due Date
2” (Paper 27)) seeking to disclose “Transbay Shop Drawings” (Ex. 1020) to
the Board with its Reply and Opposition to the Motion to Amend. Paper 27,
2. Petitioner explained the following:
On November 5, 2018, Petitioner filed suit against O’Keeffe’s, Inc.
d/b/a SAFTI FIRST (“SAFTI”) in the United States District Court for
the Northern District of California for infringement of United States
Letters Patent No. 7,694,475 B2.
Id. at 1. Discovery during the District Court proceeding yielded three
drawings labeled “PROJECT: TRANSBAY TRANSIT CENTER” and
bearing a date of March 16, 2015 (“[Transbay Shop Drawings],” Ex. 1020).
As part of its production to Petitioner, SAFTI produced several hundred
pages of documents bearing the designation “ATTORNEYS’ EYES
ONLY,” some of which are shop drawings showing the apparatus
claimed in U.S. Patent No. 9,926,709 (“the ’709 Patent”) in real-world
applications and uses. Among these shop drawings were three
drawings labeled “PROJECT: TRANSBAY TRANSIT CENTER” and
bearing a date of March 16, 2015.
Paper 27, 1–2. The “Transbay Shop Drawings” were subject to an agreed–
upon Protective Order. Petitioner indicated that “the District Court granted
Petitioner’s motion for limited relief” (id. at 2) from the Protective Order so
that Petitioner could disclose these drawings to the Board with its Reply and
Opposition.
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We determined that Patent Owner had contended both in the
Preliminary Response and the Motion to Amend that the flooring system
offered for sale in March of 2015 did not contain an adjustment mechanism
as claimed in the ’709 Patent. See Order, Paper 29, 4 (“Patent Owner’s
Corrected Preliminary Response,” Paper 9, 2–3, and MTA 8 (“[P]age 17 of
25 of Exhibit 1008 does not reveal or describe the adjustment mechanism of
the ’709 patent.”)). We were persuaded, inter alia, that that the shop
drawings materially affected Petitioner’s ability to respond to Patent
Owner’s contentions, made in its Preliminary Response and Motion to
Amend, that the flooring system offered for sale in March of 2015 did not
contain an adjustment mechanism, as claimed in the ’709 Patent. Id. at 4.
Accordingly we authorized Petitioner to disclose the “Transbay Shop
Drawings” (Ex. 1020) to the Board with its Reply and Opposition to the
Motion to Amend:
If the shop drawings do in fact show that the flooring system
offered for sale in March of 2015 contained a glass floor adjustment
mechanism, as claimed in the ’709 Patent, then the shop drawings may
“rebut the Patent Owner’s contention[s] [made in it[s] Preliminary
Response and Motion to Amend] that the flooring system offered for
sale in March of 2015 did not contain ‘an adjustment mechanism’ as
claimed in the ’709 Patent” as Petitioner argues. Paper 27, 3. If they
do not – as Patent Owner contends (see Paper 28, 1) – then the shop
drawings would not support Petitioner’s rebuttal. That is a dispute we
cannot resolve until we see the drawings.
For the foregoing reasons, we are persuaded that the shop
drawings materially affect Petitioner’s ability to respond to Patent
Owner’s contentions, made in it Preliminary Response and Motion to
Amend, that the flooring system offered for sale in March of 2015 did
not contain an adjustment mechanism, as claimed in the ’709 Patent.
We are relatedly persuaded that consideration by the Board of the shop
drawings would be in the interests of justice, as they would help resolve
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whether the flooring system offered for sale in March of 2015 in fact
contained an adjustment mechanism, as claimed in the ’709 Patent.
Order, Paper 29, 4.
Regarding whether “Transbay Shop Drawings” (Ex. 1020) refer to the
same “120 Minute Fire Resistive Floor System” described in “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008).
Petitioner contends the following:
Notably, the Transbay Shop Drawings describe the glass units as
constituting “120 minute rated Superlite–II-XL”, which is the same
description utilized for the glass floor units within Patent Owner’s
product brochure (Ex. 1012; 4), as well as within the ’709 Patent itself
(Ex. 1001; Col. 2, ll. 53–55).
Pet. Reply 6. In so contending, Petitioner suggests that the system described
in “Transbay Shop Drawings” (Ex. 1020) refers to the same “120 Minute
Fire Resistive Floor System” described in “Bid Package TG08.7 Addendum
No. 4” (Ex. 1008).
For its part, Patent Owner makes three arguments.
First, that “there was never an offer for sale using the conceptual shop
drawings of Ex. 1020.” PO Sur-reply 3. “[T]here is no evidence, other than
an unsupported statement by Petitioner, that such documents were offered
for sale by provision of the same in the bid process of the WOJV.” Id. at 2.
Second, that the “Transbay Shop Drawings” (Ex. 1020) do not show
an adjustment mechanism. This second argument relies on
the declarations of William O’Keeffe and Thanh Truong which state
that Ex. 1020 does not show[ ] an adjustment mechanism for the
position of the glass floor which is an essential feature of the amended
substitute claims 13–19 of the ’709 patent (Ex. 2002) (Ex. 2003).
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PO Sur-reply 3. We will address this second argument in more detail below
where we analyze whether the “Transbay Shop Drawings” (Ex. 1020)
describe the claimed subject matter.
And, third, that the drawings in “Transbay Shop Drawings”
(Ex. 1020) were not publicly available.
As to the first argument, Petitioner responds that “it is significant that
Patent Owner has failed to produce any evidence other than the O’Keeffe
Declaration (Ex. 2002) to rebut Petitioner’s characterization of the Transbay
Drawings as part of SAFTI’s offer for sale to the WJOV.” Pet. Sur- Sur-
Reply 2.
According to Patent Owner, the O’Keeffe Declaration (Ex. 2002)
states that “the conceptual shop drawings of Ex. 1020 (‘Transbay Shop
Drawings’) were prepared for a bomb blast resistant glass floor.” PO Sur-
reply 5. As we understand it, Patent Owner is suggesting that “Transbay
Shop Drawings” (Ex. 1020) does not show the same 120 Minute Fire
Resistive Floor System described in “Bid Package TG08.7 Addendum No.
4” (Ex. 1008) but something different; that is, a bomb blast resistant glass
floor.
We have reviewed the O’Keeffe Declaration (Ex. 2002). It states the
following:
3. Ely Exhibit 1008 represents the only documents provided to WOJV
showing our glass floor unit, the GPX Fire Floor, which did not include
the adjustment mechanism of the ’709 patent.
4. I also authorized the creation of the conceptual shop drawings of Ely
Exhibit 1020 to show a glass floor unit having a bomb blast resistant
structure. Specifically, a bolted down plate was conceived to interpose
the glass layers of the GPX Fire Floor unit to resist an upward force
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from a bomb blast. The adjustment mechanism of the ’709 patent is
not present in the conceptual shop drawings of Ely Exhibit 1020.
Id. at 1.
Petitioner counters that
in an email dated March 3, 2015 from O’Keeffe to Scott Onick, Project
Manager of the Transbay Transit Center Project and an employee/agent
of the Webcor–Obayashi Joint Venture (“WOJV”), O’Keeffe stated
that “it is our [SAFTI’s] desire to provide a system that will surpass the
system currently being considered. This will be . . . a system that . . .
has a bomb blast hold down solution. . .” Ex. 1027 at 2 (emphasis
added). It defies all reason to believe that the “bomb blast hold down
solution” being referenced in O’Keeffe’s email is not the same as the
“bomb blast resistant structure” that O’Keeffe admits is show[n] in
SAFTI’s Transbay Drawing.
Pet. Sur-Sur-Reply 1.
We have reviewed Ex. 1027. It supports Petitioner’s view that the
system described in Transbay Shop Drawings” (Ex. 1020) is the one offered
for sale to WOBJ via “Bid Package TG08.7 Addendum No. 4” (Ex. 1008),
notwithstanding it may be, as Patent Owner argues, a bomb blast resistant
glass floor.
Ex. 1027 is a copy of a string of two emails. In the first email, dated
March 3, 2015, Scott Onick, “Project Manager – Transbay Transit Center[;]
Webcor/Obayashi Joint Venture – 175 Beale St, San Francisco CA 94105”
(id. at 1) references the second email which, according to Mr. Onick,
“contains the additional glass floor information . . . for Safti First’s
substitution request.” Id. In the second email, also dated March 3, 2015,
Mr. O’Keeffe writes to Mr. Onick that “it is our desire to provide a system
that will surpass the system currently being considered. This will be . . . a
system that . . . has a bomb blast hold down solution, . . . .” Id. at 2.
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Mr. O’Keeffe includes other advantages (e.g., “leak free”) and ends by
saying “[w]e hope all these advantages presented will find favor in your
decision making.” Id. at 2–3. This exchange between Mr. O’Keeffe and an
employee of the WOBJ and Project Manager of the Transbay Transit Center
occurred on March 3, 2015, before the March 10, 2015 deadline set in “Bid
Package TG08.7 Addendum No. 4” (Ex. 1008) for submission of proposals.
Rather than suggesting the system described in “Transbay Shop
Drawings” (Ex. 1020) is different from the 120 Minute Fire Resistive Floor
System described in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008),
Ex. 1027 suggests the opposite. Because the system in “Transbay Shop
Drawings” (Ex. 1020) is said to be a bomb blast resistant floor, it has
qualities that align it with the system offered for sale via the Substitution
Request (“Bid Package TG08.7 Addendum No. 4” (Ex. 1008, 6–25)). It is
also notable that Mr. O’Keeffe does not in fact say in his declaration
(Ex. 2002) that the system described in “Transbay Shop Drawings”
(Ex. 1020) is different from the 120 Minute Fire Resistive Floor System
described in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008) that was
offered for sale.
Based on our review of the evidence, we find that Petitioner has
shown that the system that is described in “Transbay Shop Drawings”
(Ex. 1020) is the same as the 120 Minute Fire Resistive Floor System
described in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008).
Regarding Patent Owner’s argument that the drawings in “Transbay
Shop Drawings” (Ex. 1020) were not publicly available (see PO Sur-reply
2), we agree with Petitioner that “whether SAFTI’s Transbay Drawings were
shown to anyone at the WOJV is irrelevant to the issue of whether the
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invention claimed in original claims 1–12 was offered for sale to the WJOV
by SAFTI.” Pet. Sur-Sur-Reply 3. See King Instrument Corp. v. Otari
Corp., 767 F.2d 853, 860 (Fed. Cir. 1985) (“the purchaser need not have
actual knowledge of the invention for it to be on sale.”).
2. Independent Claim 1
As discussed in Section II.E.1(c)(2) above, the parties agree that the
drawings of Safti First’s “120 Minute Fire Resistive Floor System” in
Ex. 1008 do not show all of the elements of claim 1 (including the claimed
“adjuster”), so Petitioner instead relies on Exhibits 1009 and 1020 as
evidence of the product offered for sale. As also discussed above in
Sections II.E.1(c)(2)[a] and [b] above, we find that Exhibits 1009 and 1020
show the same 120 Minute Fire Resistive Floor System offered for sale in
Exhibit 1008. Below we analyze whether Exhibits 1009 and 1020 provide
sufficient evidence that the 120 Minute Fire Resistive Floor System met the
limitations of claim 1, including any elements missing from Exhibit 1008.
(a) “120 Minute Fire Resistive Floor System” (Ex. 1009)
(1) “an adjuster”
Petitioner provides an expanded view of the support mechanism
disclosed on page 2 of “120 Minute Fire Resistive Floor System” (Ex. 1009)
and compares it to Figure 3 of the ʼ709 patent. Pet. 15.
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This image represents a comparison of Petitioner’s expanded view of the
support mechanism disclosed on page 2 of “120 Minute Fire Resistive Floor
System” (Ex. 1009) on the left and Figure 3 of the ʼ709 patent on the right.
Id.
Petitioner continues:
More specifically, with respect to claim 1, the GPX
FireFloor System includes a glass floor unit and a base (the fire
resistive structural frame):

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Ex. 1009; Ex. 1003 at ¶ 46. The GPX FireFloor System also includes
a support that contacts the glass floor and a receiver configured for
extension and fixed to the base, along with an adjuster and a connector
to link the support to the adjuster:

Ex. 1009, Ex. 1003 at ¶ 47. Rotational movement of the adjuster in the
GPX FireFloor System will cause movement of both the connector and
the support that are attached thereto, thereby moving the glass floor
unit relative to the base. Ex. 1003 at ¶ 48.
Pet. 15–17 (emphases added).
Mr. Macfarlane explains that “[a]s can be seen from these drawings
. . . , the GPX FireFloor System contains each and every limitation of the
claims of the ’709 Patent.” Ex. 1003 at ¶ 45. See Pet. 15.
Patent Owner agrees, admitting that “Petitioner is correct in asserting
that the system shown in GPX FIRE FLOOR SYSTEM, PATENT
PENDING (Ex. 1009) is the same as that depicted in the ’709 patent, based
on comparison of the drawing figures and the declaration of Tim Macfarlane
(Ex. 1003).” PO Resp. 5–6.
Based on our review of the evidence of record, including
Mr. Macfarlane’s explanation and Patent Owner’s admission, we are
persuaded that the above-italicized analysis by Petitioner concerning the
technical details of the GPX FireFloor System, and its correspondence to the
claimed adjustment mechanism, is correct.
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Accordingly, we are persuaded on this record that Petitioner
demonstrates that the GPX FireFloor System described in “120 Minute Fire
Resistive Floor System” (Ex. 1009) includes the adjustment mechanism as
claimed.
As discussed above, Petitioner has shown that the GPX FireFloor
System described in the “120 Minute Fire Resistive Floor System”
(Ex. 1009) is the same as the “120 Minute Fire Resistive Floor System”
offered for sale in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008).
Therefore, we find that the product offered for sale included the claimed
adjuster.
(2) “a glass floor unit,” “a base,” “a support,” “a
receiver,” “a connector”
Based on our review of the evidence of record, we are persuaded that
the above analysis by Petitioner concerning the technical details of the GPX
FireFloor System described in “120 Minute Fire Resistive Floor System”
(Ex. 1009), coupled with Mr. Macfarlane’s explanation, that correspond to
the claimed “a glass floor unit,” “a base,” “a support,” “a receiver,” and, “a
connector,” is correct. See our discussion of Ex. 1009 in Section
E.(1)(c)(2)[a].
Patent Owner does not contest that these limitations are present.
We are therefore also persuaded on this record, which includes Patent
Owner’s admission, that Petitioner demonstrates that GPX FireFloor System
that is described in “120 Minute Fire Resistive Floor System” (Ex. 1009)
includes “a glass floor unit,” “a base,” “a support,” “a receiver,” and, “a
connector” as claimed.
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As discussed above, we find that this GPX FireFloor System is the
same as the one offered for sale in “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008). Therefore, we find that the product offered for sale included
these limitations of claim 1.
(b) “Transbay Shop Drawings” (Ex. 1020)
(1) “an adjuster”
Petitioner provides an expanded view, reproduced below, of the
adjustment mechanism disclosed on page 5 of “Transbay Shop Drawings”
(Ex. 1020) and compares it to Figure 3 of the ʼ709 patent. Pet. Reply 5.

The image represents a comparison of Petitioner’s expanded view of the
adjustment mechanism disclosed on page 5 of “Transbay Shop Drawings”
(Ex. 1020) and Figure 3 of the ʼ709 patent. Id.
Petitioner continues, referring to a drawing on page 5 of “Transbay
Shop Drawings” (Ex. 1020), reproduced below. Id. at 6:
More specifically, with respect to independent claim 1 as shown
below, the Transbay Shop Drawings include a glass floor unit and a
base (the fire resistive structural frame):
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. . . .
As shown in the blown–up portion of the above drawing that is
reproduced below, the Transbay Shop Drawings also show: (i) a
support that contacts the glass floor unit; (ii) a receiver configured for
extension and fixed to the base; and (iii) an adjuster, which has threads
and so is configured to interact with the receiver to produce relative
movement between the receiver and the adjuster. Ex. 1022 at ¶ 31.

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Pet. Reply 6–7.
As Mr. Macfarlane explains, the drawing above includes
a support that contacts the glass floor, a receiver configured for
extension and fixed to the base, along with an adjuster, and a hat
channel removably positioned over the adjuster. The support is a sheet
that is rotatable within the cavity of the glass floor unit. The adjuster is
positioned in the cavity and rotates relative to the receiver. The hat
channel is positioned over the adjuster and can be removed to permit
access to the adjuster in the cavity.
Ex. 1033 ¶ 31.
Patent Owner disputes that “Transbay Shop Drawings” (Ex. 1020)
shows the adjuster as claimed. Patent Owner relies on a portion of the
drawing on page 3 of “Transbay Shop Drawings” (Ex. 1020) and
Declarations of Mr. O’Keeffe and Thanh Truong (Exs. 2002 and 2003). See
PO Sur-reply 3–5.
Patent Owner provides an annotated version of a portion of the
drawing on page 3 of “Transbay Shop Drawings” (Ex. 1020), reproduced
below. PO Sur-reply 4.
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The preceding image is an annotated version of a portion of the drawing on
page 3 of “Transbay Shop Drawings” (Ex. 1020). Id.
Based on said annotated version, Patent Owner argues
the bolt that rotates as part of the plate holder lacks a fixed nut below
the plate. In essence, such a fixed nut is necessary for the adjustment
mechanism of the ’709 patent to raise the floor unit. Also, the turning
of the bolt of the plate holder would not cause the plate to contact the
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glass of the glass unit in a downward direction, as the threaded portion
of the bolt has bottomed out.
PO Sur-reply 5.
In arguing that “Transbay Shop Drawings” (Ex. 1020) does not show
a fixed nut, we believe Patent Owner is arguing that the “Transbay Shop
Drawings” (Ex. 1020) does not show the “connector” as claimed. The
“connector” element is discussed below. Otherwise, the argument is not
commensurate in scope with what is claimed. The invention as claimed does
not require contacting the glass of the glass unit in a downward direction.
Petitioner does not dispute that “Transbay Shop Drawings” (Ex. 1020) does
not show the “connector” as claimed. See Pet. Reply 7 (“Although the
Transbay Shop Drawings do not explicitly show a connector linking the
support to the adjuster . . . .”)
The relevant part of the O’Keeffe Declaration states:
I also authorized the creation of the conceptual shop drawings of Ely
Exhibit 1020 to show a glass floor unit having a bomb blast resistant
structure. Specifically, a bolted down plate was conceived to interpose
the glass layers of the GPX Fire Floor unit to resist an upward force
from a bomb blast. The adjustment mechanism of the ’709 patent is
not present in the conceptual shop drawings of Ely Exhibit 1020.
Ex. 2002, 1 (¶ 4).
The O’Keeffe Declaration insufficiently shows that the adjuster as
claimed is not present in “Transbay Shop Drawings” (Ex. 1020).
Given that Petitioner has provided an annotated version of a drawing
on page 5 of “Transbay Shop Drawings” (Ex. 1020) identifying what
appears to be a bolt as corresponding to the adjuster as claimed (reproduced
above; Pet. Sur-Sur-Reply 6–7), which Mr. Macfarlane confirms (Ex. 1033,
¶ 31), Mr. O’Keeffe’s unsupported statements that “a bolted down plate was
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conceived . . . “ and “[t]he adjustment mechanism of the ’709 patent is not
present in the conceptual shop drawings of Ely Exhibit 1020” are
insufficient as countervailing evidence.
The relevant part of the Truong Declaration states:
The conceptual shop drawings of Exhibit 1020 do not show the
adjustment mechanism recited in the specification, drawings, and
claims of United States Patent 9,926,709 (’709 patent).
Specifically, the control adjuster bolt 66 and fixed nut of the ’709
patent are [ ] not shown in the conceptual shop drawings. Thus, the
turning of the bolt in Exhibit 1020 merely positions a plate (identified
as a support in page 7 of the Ely Reply to Patent Owner's Response)
between layers of the glass floor unit and does not allow the floor unit
to be adjusted upwardly, as is the case with the adjustment mechanism
shown in F'IG, 3 of the '709 patent. Any upward bomb blast force will
be resisted by the plate held to the receiver by the bolt and nut (Ely
Exhibit 1020),
Ex. 2003, 1–2 (¶¶ 5 and 6) (emphasis added).
The Truong Declaration is insufficient to show that the adjuster as
claimed is not present in “Transbay Shop Drawings” (Ex. 1020) because the
statements made therein are not commensurate in scope with what is
claimed. There is no requirement in the claim that the floor unit be allowed
to be adjusted upwardly. We agree with Petitioner that
Truong attempts to distinguish SAFTI’s Transbay Drawings from the
claimed floor system by arguing that the mechanism shown in SAFTI’s
Transbay Drawings “does not allow the floor unit to be adjusted
upwardly” (Ex. 2003 at ¶ 6), when no such requirement is present in
the claims of the ’709 Patent. See Ex. 1001 at 4:18–5:10.
Pet. Sur-Sur-Reply 3.
As for “Transbay Shop Drawings” (Ex. 1020) not showing a
“connector” as claimed (such as a “fixed nut”), Petitioner does not dispute
that “Transbay Shop Drawings” (Ex. 1020) does not show the “connector”
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as claimed. See Pet. Reply 7 (“Although the Transbay Shop Drawings do
not explicitly show a connector linking the support to the adjuster . . . .”) See
discussion below.
Based on our review of the evidence of record, we are persuaded that
the analysis by Petitioner concerning the technical details of the system
described in the drawings of “Transbay Shop Drawings” (Ex. 1020), that
correspond to the claimed adjuster, is correct. Patent Owner’s arguments
and evidence do not persuade us otherwise, for the reasons provided.
Accordingly, we are persuaded that Petitioner demonstrates that the
system that is described in “Transbay Shop Drawings” (Ex. 1020) discloses
the “adjuster” as claimed.
As discussed above, we find that this system in Exhibit 1020 is the
same as the one offered for sale in Ex. 1008 and, therefore, find that the
product offered for sale included the claimed “adjuster”.
(2) “a glass floor unit,” “a base,” “a receiver”
The above–discussed analysis by Petitioner of the system illustrated
on page 5 of “Transbay Shop Drawings” (Ex. 1020) includes identifying
where on the drawing the claimed “a glass floor unit,” “a base,” and “a
receiver” are described. See Pet. Reply 6–7. Mr. Macfarlane provides
supporting evidence. See Ex. 1033 ¶ 31.
Patent Owner does not disagree.
Based on our review of the evidence of record, we are persuaded that
the analysis by Petitioner concerning the technical details of the system
described in the drawings of “Transbay Shop Drawings” (Ex. 1020), that
correspond to the claimed “a glass floor unit,” “a base,” and “a receiver,” is
correct.
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Accordingly, we are persuaded that Petitioner demonstrates that the
system that is described in “Transbay Shop Drawings” (Ex. 1020) discloses
“a glass floor unit,” “a base,” and “a receiver” as claimed.
As discussed above, we find that this system in Exhibit 1020 is the
same as the one offered for sale in Ex. 1008 and, therefore, find that the
product offered for sale included these claim elements
(3) “a support”
The above–discussed analysis by Petitioner of the system illustrated
on page 5 of “Transbay Shop Drawings” (Ex. 1020) includes identifying
where on the drawing the claimed “support” is described. See Pet. Reply 6–
7 and Section II.E.2.(b)(1). Mr. Macfarlane provides supporting evidence.
See Ex. 1033 ¶ 31.
Referring to the annotated version of a portion of the drawing on page
3 of “Transbay Shop Drawings” (Ex. 1020) (reproduced above), Patent
Owner makes the following comments:
The plate (unnumbered), misidentified by Petitioner as a “support”, lies
in between an upper glass layer (unnumbered), and a lower glass layer
(unnumbered). This plate (unnumbered) is shown as being imbedded
[sic] in a non–metallic material (unnumbered) and free of contact from
any of the glass layers (unnumbered) of the glass unit.
PO Sur-reply 5.
But Petitioner identifies the plate in the drawing on page 5, not page
3, of “Transbay Shop Drawings” (Ex. 1020) as corresponding to the claimed
“support,” and it is that drawing on page 5 that Mr. Macfarlane is referring
to (Ex. 1033 ¶ 31).
Also, Patent Owner concludes that the plate illustrated on page 3 of
“Transbay Shop Drawings” (Ex. 1020) is not “positioned to contact the glass
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floor unit” (claim 1). To reach that conclusion, Patent Owner interprets the
drawing on page 3 of “Transbay Shop Drawings” (Ex. 1020) as showing the
plate embedded “in a non–metallic material (unnumbered) and free of
contact from any of the glass layers (unnumbered) of the glass unit.” PO
Sur-reply 5. But there is no indication on page 3 of “Transbay Shop
Drawings” (Ex. 1020) of a “non–metallic material” material or that the plate
is embedded in such a material. Given no other evidence than what is shown
on page 3 of “Transbay Shop Drawings” (Ex. 1020), Patent Owner’s attempt
to distinguish the claimed “support” based on the plate on page 3 of
“Transbay Shop Drawings” (Ex. 1020) being embedded in non–metallic
material is insufficient.
Based on our review of the evidence of record, we are persuaded that
the analysis by Petitioner concerning the technical details of the system
described in the drawings of “Transbay Shop Drawings” (Ex. 1020), that
correspond to the claimed “support,” is correct.
Accordingly, we are persuaded that Petitioner demonstrates that the
system that is described in “Transbay Shop Drawings” (Ex. 1020) discloses
the “support” as claimed.
As discussed above, we find that this system in Exhibit 1020 is the
same as the one offered for sale in Ex. 1008 and, therefore, find that the
product offered for sale included this claim element.
(4) “a connector”
Petitioner concedes that “Transbay Shop Drawings” (Ex. 1020) does
not explicitly show the “connector” as claimed.
Although the Transbay Shop Drawings do not explicitly show a
connector linking the support to the adjuster, this feature is shown in
the GPX FireFloor product brochure (Ex. 1009) that Petitioner cited in
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the petition. Patent Owner has not denied that SAFTI’s offer for sale
to the WOJV involved the GPX 120–minute FireFloor System and has
not denied that the GPX FireFloor product brochure shows such a
connector. Moreover, as Patent Owner was offering to sell its “GPX
120 minute glazed floor system” to WOJV as part of its bidding
package, it can be implicitly inferred that the product included the
connector, particularly as the 120 minute fire resistive floor system
marketed and sold by Patent Owner as the “GPX FireFloor System”
includes a connector.
Pet. Reply 7.
We have determined that, based on our review of the evidence of
record, Petitioner has shown that “120 Minute Fire Resistive Floor System”
(Ex. 1009) and “Transbay Shop Drawings” (Ex. 1020) describe the same
120 Minute Fire Resistive Floor System that Safti First offered to sell to
WOJB via “Bid Package TG08.7 Addendum No. 4” (Ex. 1008). See
sections II.E.1.(c)(2)[a] and [b]. It follows therefrom that any element
described in one is necessarily included in the “120 Minute Fire Resistive
Floor System” that Safti First offered to sell to WOJB via “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008). In that regard, there is no dispute
that “120 Minute Fire Resistive Floor System” (Ex. 1009) describes the
claimed connector. See section II.E.2.(a)(2). Accordingly, we agree with
Petitioner that “it can be implicitly inferred that the product [Safti First
offered to sell to WOJB] included the connector, particularly as the 120
minute fire resistive floor system marketed and sold by Patent Owner as the
“GPX FireFloor System” [referring to the “120 Minute Fire Resistive Floor
System” (Ex. 1009)] includes a connector” (Pet. Reply 7).
(c) Conclusion
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates that the systems described in “120 Minute Fire
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Resistive Floor System” (Ex. 1009) and “Transbay Shop Drawings”
(Ex. 1020) are the same as the system described in “Bid Package TG08.7
Addendum No. 4” (Ex. 1008).
We are further persuaded based on our review of the evidence of
record that all the elements set forth in claim 1, including the adjuster, are
described in “120 Minute Fire Resistive Floor System” (Ex. 1009) and
“Transbay Shop Drawings” (Ex. 1020).
Accordingly, we are persuaded the Petition demonstrates by a
preponderance of the evidence that independent claim 1 is anticipated by the
offer for sale to the Webcor/Obayashi Joint Venture of the “120 Minute Fire
Resistive Floor System” described in the “Bid Package TG08.7 Addendum
No. 4” (Ex. 1008).
3. Dependent Claims 2–12
Petitioner sets forth an analysis of claims 2–12 with respect to the
system described in “120 Minute Fire Resistive Floor System” (Ex. 1009)
that is similar to that presented for claim 1. Pet. 17–19. See Section
II.E.2.(a).
Patent Owner presents no arguments rebutting the challenge as to
claims 2–12.
Having considered all the arguments and evidence presented as to
these claims, we are persuaded by Petitioner’s contentions that “120 Minute
Fire Resistive Floor System” (Ex. 1009) describes the subject matter of
claims 2–12.
For the reasons previously discussed, we are persuaded the Petition
demonstrates that the system described in “120 Minute Fire Resistive Floor
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System” (Ex. 1009) is the same as the system described in “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008).
Accordingly, based on our review of the evidence of record, Petitioner
demonstrates by a preponderance of the evidence that dependent claims 2–
12 are anticipated by the offer for sale to the Webcor/Obayashi Joint
Venture of the “120 Minute Fire Resistive Floor System” described in the
“Bid Package TG08.7 Addendum No. 4” (Ex. 1008).
F. Ground II
Petitioner challenges claims 1–12 as obvious under 35 U.S.C.
§ 103(a) over Rae and DE759. Pet. 3–4, 20–38.
1. Independent Claim 1
Petitioner relies on Rae for the “glass floor unit,” “base,” “support,”
and “receiver.” Pet. 21–25. For the “adjuster” and “connector,” Petitioner
relies on DE759. Pet. 25–28. According to Petitioner, “one skilled in the art
would have been motivated to combine the teachings of Rae and DE759 . . .
[to] arrive at the invention of claim 1 without undue experimentation and
with a reasonable expectation of success.” Id. at 28.
(a) “a glass floor unit”
Claim 1 recites “a glass floor unit.” Ex. 1001, 4:20.
Both parties have agreed that the “glass floor unit” of claim 1
comprises two components. See Pet. 22, relying on Exhibit 1001 at column
2, lines 47–52 (“[g]lass floor unit 14 includes an upper portion 20 . . . [and a]
[l]ower or bottom portion 22 . . .”) and Prelim. Resp. 4 (“a two–component,
one–piece glass floor unit such as that claimed in claim 1 of the ʼ709
Patent,” emphasis added).
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According to Petitioner, “a glass floor unit” having two components is
“identically disclosed by Rae”:
[t]he specification of the ’709 Patent discloses that “[g]lass
floor unit 14 includes an upper portion 20 which consists of
multi-laminate glass of durable construction. Lower or bottom
portion 22 is fashioned with fire-rated glass . . . .” Ex. 1001 at
2:47––52.
Rae similarly discloses “a fire rated glass flooring system
comprising a first layer of glass and a second layer of glass, . . .
wherein the first layer of glass is a structural glass and the second
layer of glass is a fire rated glass.” Ex. 1014 at 1:36–42.
Pet. 22 (citing Ex. 1003 ¶ 60). “Rae therefore teaches the glass floor unit
element of claim 1. Ex. 1003 ¶ 60.” Id.
The evidence supports Petitioner’s position.
Fig. 3 of Rae is reproduced below.

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Fig. 3 shows an embodiment of Rae’s double layer fire rated glass flooring
system.
Rae states that “FIG. 3 shows a first embodiment of the double layer
fire rated glass flooring system of the present invention.” Ex. 1003, 5:21–
22. The glass flooring system, as Fig. 3 shows, comprises two components:
(a) fire rated glass represented by “[s]heets of fire rated glass 26, 27” (id. at
5:38); and (b) structural glass represented by sheets 32 and 33. “[S]tructural
glass sheets 32, 33 are placed on top of the silicone pads 31 parallel to the
fire rated sheets 26, 27 . . . .” Id. at 56–57.
Patent Owner argues that “the Rae patent shows a separated two
component system rather than a glass floor unit as is disclosed in the ’709
patent.” PO Resp. 7. According to Patent Owner, in Rae, “the first layer of
glass (structural glass) is supported apart from the second layer of glass.” Id.
In contrast,
any force exerted on the unit of the ’709 patent will move the unit,
having two layers, upwardly or downwardly at the same time. . . . units
14 and 16 of the ’709 patent do not have separately movable glass
layers. Units 14 and 16 are whole entities, as is indicated by the written
description of Column 2, Lines 33–56.
Id.
The difficulty with this argument is that claim 1 simply calls for “a
glass floor unit.” The claim does not further limit the glass floor unit. The
parties have agreed that the “glass floor unit” claimed comprises two
components, but there is no requirement, for example, that the two
components be unmovable with respect to each other or that any force
exerted on one component should necessarily be exerted on the other. Patent
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Owner’s argument, therefore, is not commensurate in scope with what is
claimed.
Based on our review of the evidence of record, Petitioner has shown
that Rae discloses “a glass floor unit” having two components as claimed.
(b) “a base”
Claim 1 recites “a base, said base positioned to contact the foundation
and extending therefrom without relative movement between the base and
the foundation.” Ex. 1001, 4:21–23.
Petitioner contends that Rae discloses a structural frame supporting
the glass flooring system. Pet. 23 (“Rae discloses ‘a fire rated glass flooring
system comprising a first layer of glass and a second layer of glass . . .
together with a structural frame supporting the flooring system . . . .’
Ex. 1014 at 1:36–42.”).
Patent Owner has provided no argument challenging Petitioner’s
contention.
As Mr. Macfarlane explains, Rae discloses “that ‘the structural frame
preferably comprises a number of beams and cross members positioned to
support the sheets of glass forming the first and second layers.’ Ex. 1014 at
2:20–23.” Ex. 1003, ¶ 63. Fig. 3, reproduced above, shows the structural
frame comprising inter alia beam 21 which, according to Mr. Macfarlane,
“corresponds to the claimed base” (Ex. 1003 ¶ 74).
Petitioner concedes that “Rae does not expressly disclose a foundation
[but] [a]s Mr. Macfarlane explains, one skilled in the art would understand
that the flooring system disclosed by Rae is intended to and would be used
with a foundation or the like.” Pet. 23 (citing Ex. 1003 ¶ 64). We agree.
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For the flooring system to function as a floor, Rae’s structural frame
for the flooring, including the beam, must necessarily be “positioned to
contact [a] foundation and extending therefrom without relative movement
between the base and the foundation.” Claim 1. As Mr. Macfarlane
explains “one skilled in the art would recognize that Rae’s flooring system is
not intended to be used on its own, but, rather, would be installed in a
building or similar structure, i.e. a foundation.” Ex. 1003 ¶ 64.
Based on our review of the evidence of record, Petitioner has shown
that Rae discloses “a base” as claimed.
(c) “a support”
Claim 1 recites “a support, said support positioned to contact the glass
floor unit.” Ex. 1001 at 4:24–25.
Petitioner contends that
Rae discloses that the structural frame supporting the flooring system
“preferably comprises a number of beams and cross members . . . .”
Ex. 1014 at 2:20–23. Rae further discloses that “[a] strip of 8 mm thick
steel 24 is welded to the centre [sic] of the top surface 22 of the beam
21 extending along the length of the beam 21.” Id. at 5:33–35.
Pet. 23–24.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Regarding the structural frame, as Petitioner points out, “Rae
discloses ‘a fire rated glass flooring system comprising a first layer of glass
and a second layer of glass . . . together with a structural frame supporting
the flooring system . . . .’ Ex. 1014 at 1:36–42.” Pet. 23 (emphasis added).
Consistent with Petitioner’s characterization, Fig. 3 of Rae,
reproduced above, shows the flooring system positioned on top of beam 21
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and the sheets (i.e., fire rated glass sheets 26 and 27 and structural glass
sheets 32 and 33) positioned beside steel strip 24 that is welded to and
extending from said beam below.
Petitioner also points to glazing bars 30. Petitioner points out that Rae
discloses drilling slots in the steel strip and “‘30 mm x 20 mm mild steel
glazing bars 30 pass through the slots 25 [and] hold the sheets [of glass] 26,
27 in place.’ Id. at 5:48–51.” Pet. 24. As Mr. Macfarlane explains, “[a]
person of ordinary skill in the relevant art would necessarily understand that
these mild steel glazing bars 30 correspond to the support element of claim 1
since they are “positioned to contact [and hold in place] the glass floor unit.”
Ex. 1003 ¶ 70.
Based on our review of the evidence of record, for all the reasons
given, Petitioner has shown that Rae discloses “a support” as claimed.
(d) “a receiver”
Claim 1 recites “a receiver, said receiver configured for extension
from said base and fixation to said base to prevent relative movement
between said receiver and said base.” Ex. 1001, 4:26–28.
Petitioner contends that “Rae’s strip of thick steel 24 corresponds to
the receiver of claim 1. Ex. 1003 at ¶ 74.” Pet. 25.
Because this strip of thick steel is “welded” to the beam (which
corresponds to the claimed base), it is “configured for . . . fixation to
said base to prevent relative movement between said receiver and said
base.” Id. Moreover, because this strip of thick steel includes elongated
slots 25 to permit glazing bars 30 to be moved further away from (i.e.
more distant from) beam 21 (the base), Rae’s receiver is also
“configured for extension from said base.” Id. at ¶ 75.
Id.
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Patent Owner has provided no argument challenging Petitioner’s
contention.
Consistent with Petitioner’s characterization, Rae Fig. 3, reproduced
above, shows steel strip 24 welded to and extending from the beam. In
being so welded and extended from the base, steel strip 24 is “configured for
extension from said base and fixation to said base to prevent relative
movement between said receiver and said base” as claimed. As
Mr. Macfarlane explains, “[a] person of ordinary skill in the relevant art
would necessarily understand that Rae’s strip of thick steel 24 is “configured
for . . . fixation to said base to prevent relative movement between said
receiver and said base” because Rae teaches that it is welded to the beam
(which corresponds to the claimed base).” Ex. 1003.
Based on our review of the evidence of record, Petitioner has shown
that Rae discloses “a receiver” as claimed.
(e) “an adjuster”
Claim 1 recites “an adjuster, said adjuster configured to interact with
said receiver and to produce relative movement between said receiver and
said adjuster.” Ex. 1001, 4:29–31.
Petitioner relies on DE759. Petitioner contends that
DE759 discloses a multi–layer flooring system having an upper layer
of floor panels for walking upon and a lower layer of fire protection
panels. Ex. 1015 at 15. DE759 further discloses a height–adjustable
screw mechanism in contact with the underside of the upper layer of
floor panels that enables adjustment of the height of the upper layer
relative to the foundation to eliminate any unevenness. Ex. 1003 at
¶ 78; Ex. 1015 at 4, FIGS. 3/10, 4/10.
Pet. 25.
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Patent Owner has provided no argument challenging Petitioner’s
contention.
Figs. 3/10 (“Fig. 3”) and 4/10 (“Fig. 4”) of DE759 (Ex. 1015) are
reproduced below.

Fig. 3 is a sectional view through a section of the raised floor according to
an embodiment of the DE759 invention.
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Fig. 4 is sectional view through a section of the raised floor according to
another embodiment of the DE759 invention.
Mr. Macfarlane explains that “DE759’s height-adjustable screw
mechanism consists of a height–adjustable screw seated in a support tube
having an internal thread and welded to a base plate. Ex. 1015 at 3–4, FIGS.
3/10, 4/10.” Ex. 1003 ¶ 79. As can be seen in Figs. 3 and 4, reproduced
above, DE759 discloses a screw (18) and a locknut (20) within a support
tube (14). See Ex. 1015, 14. “The screw in turn holds a support plate 22 on
its upper side, on which the actual base layer rests.” Id. Mr. Macfarlane
further explains that “the height–adjustable screw is ‘configured to interact
with [the] receiver and to produce relative movement between [the] receiver
and’ [claim 1] itself.” Id. at ¶ 80.
Based on our review of the evidence of record, Petitioner has shown
that DE759 discloses a height-adjustable screw mechanism configured to
interact with a receiver, i.e., support plate 22 (Fig. 3) or 322 (Fig. 4), and to
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produce relative movement between said receiver and said mechanism,
thereby showing DE759 discloses “an adjuster” as claimed.
(f) “a connector”
Claim 1 recites “a connector, said connector linking said support to
said adjuster to effect simultaneous movement of said support with said
relative movement between said receiver and said adjuster, said movement
of said support exerting a force on said glass floor unit to effect relative
movement between said glass floor and said base contacting said
foundation.” Ex. 1001, 4:32–38.
Petitioner contends that “DE759’s nut . . . corresponds to the claimed
connector (if connector is just a nut) . . . . Ex. 1003 at ¶ 87.” Pet. 27.
Petitioner also views “DE759’s nut and height–adjustable screw together
[as] correspond[ing] to the claimed connector (if connector is a nut and bolt
together). [Ex. 1003 at ¶ 87].” Id at 28.
Patent Owner has provided no argument challenging Petitioner’s
contention.
As can be seen in Figs. 3 and 4, DE759 discloses a screw (18) and a
locknut (20) within a support tube (14). See Ex. 1015, 14. “The screw in
turn holds a support plate 22 on its upper side, on which the actual base layer
rests.” Id. The figures also show floor panels (5), a base plate 12, to which
the support tube 14 is welded, contacting a foundation. Id.
As Mr. Macfarlane explains, the nut “causes movement of the support
plate resting on top of it (and the glass panel(s) resting on those) when the
adjuster (the height-adjustable screw) is moved relative to the receiver (the
support tube having an internal thread).” Ex. 1003 at ¶ 87. Similarly with
respect to the DE759’s nut and height–adjustable screw together,
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Mr. Macfarlane explains that “they cause movement of the support plate
resting on top (and the glass panel(s) resting on those).” Id.
Based on our review of the evidence of record, Petitioner has shown
that DE759 discloses a locknut (20) or a screw (18)/locknut (20) mechanism
linking the support, i.e., support plate 22 (Fig. 3) or 322 (Fig. 4), to the
height-adjustable screw mechanism and that this effects simultaneous
movement of said support with said relative movement between a receiver,
i.e., support tube 14, and said adjuster, said movement of said support
exerting a force on floor panels (5) to effect relative movement between said
floor panels and a base (12) contacting a foundation, thereby showing
DE759 discloses “a connector” as claimed.
(g) The motivation to combine Rae and DE759 with a
reasonable expectation of success
Based on our review of the evidence of record, Petitioner has shown
that Rae discloses the “glass floor unit,” “base,” “support,” and “receiver” as
claimed and that DE759 discloses the “adjuster” and “connector” as claimed.
Petitioner further contends that
Each and every element of claim 1 of the ’709 Patent is therefore
disclosed by the combination of Rae and DE759. Ex. 1003 at ¶ 89.
Moreover, one skilled in the art would have been motivated to combine
the teachings of Rae and DE759 in the manner described above and
therefore arrive at the invention of claim 1 without undue
experimentation and with a reasonable expectation of success. Id.
Pet. 28.
Patent Owner has provided no argument challenging Petitioner’s
contention.
In particular, as regards to incorporating DE759’s adjuster mechanism
in Rae’s fire rated glass flooring system, Petitioner argues the following:
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A person of ordinary skill in the relevant art would have been
motivated, at the time the invention claimed in Claim 1 of the ’709
Patent was made, to combine the teachings of DE759 with those of Rae
and employ a height-adjustable screw mechanism instead of the thick
strip of steel having elongated slots to facilitate finer adjustment of
floor. Ex. 1003 at ¶ 83. One skilled in the art would therefore be
motivated to replace Rae’s thick strip of steel with DE759’s support
tube and base, and to use a threaded adjuster to move the support. Id.
Pet. 26.
Patent Owner argues the following:
DE759 only shows a jack for supporting a floor. The combination of
the Rae and the DE759 patent would merely result in a device that
determines the degree of separation between the upper structural glass
layers 32, 33 and the lower fire-rated glass layers 26, 27, FIG. 3 of Rae.
The use of the DE759 jack with the Rae system could impose an upward
force against the structural glass layers 26, 22 and would dislodge
filling material 28B, silicone strip 34, and silicone pads 31. Needless
to say, this would adversely affect the fire rating of the system shown
in the ’475 patent [i.e., Rae]. In addition, the application of Rae and
DE759 would not read on the claim 1 of the ’709 patent in which the
adjuster exerts a force on the glass floor unit to effect relative
movement between the whole glass floor unit, having two glass
components, and a base contacting the foundation.
PO Resp. 8.
The difficulty with Patent Owner’s argument is that it is based on
reading the claim limitation “glass floor unit” as a single unit. As we stated
earlier in addressing a similar argument by Patent Owner with respect to this
limitation,
there is no requirement, for example, that the two components be
unmovable with respect to each other or that any force exerted on one
component should necessarily be exerted on the other. The argument
is not commensurate in scope with what is claimed.
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Section II.F.1.(a). The contention that in “claim 1 of the ’709 patent . . . the
adjuster exerts a force on the glass floor unit to effect relative movement
between the whole glass floor unit” (PO Resp. 8) is not commensurate in
scope with what is claimed. Accordingly, Patent Owner’s argument is
unpersuasive.
Substituting DE759’s support tube (14, see DE759’s Fig. 3), including
DE759’s height–adjustable threaded mechanism (locknut included) seated
therein, for Rae’s steel strip (24; see Rae Fig. 3) does no more than yield a
fire rated glass flooring system with an adjuster configured to interact with a
receiver (i.e., DE759’s support plate 22) “to produce relative movement
between said receiver [i.e., DE759’s support tube] and said [threaded]
adjuster” (claim 1), thereby reaching the claimed mechanism forming a floor
structure resting on a foundation. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., KSR, 550 U.S.
398, 416 (2007). “When a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id.
Accordingly. Petitioner’s reasoning is sufficient to support a
determination of obviousness.

(h) Conclusion
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that independent
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claim 1 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
2. Dependent Claim 2
Dependent claim 2 further limits the receiver of claim 1 such that it
“comprises one threaded portion.” Ex. 1001 at 4:40.
Petitioner contends that
DE759’s height-adjustable screw mechanism consists of a height-
adjustable screw (the adjuster) seated in a support tube welded to a base
plate (the receiver). Ex. 1003 at ¶ 93; Ex. 1015 at 3–4, FIGS. 3/10,
4/10. DE759 expressly teaches that the support tube welded to the base
plate (the receiver) has an internal thread. Ex. 1003 at ¶ 93; Ex. 1015
at 4, FIGS. 3/10, 4/10.
Pet. 29.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization is consistent with DE759’s disclosure
which expressly states that the “support tube 14 that is welded to a base plate
12 and has an internal thread on the upper side, into which a screw 18 is
screwed in a height-adjustable manner and secured at the desired height by a
locknut 20.” Ex. 1015, 14.
In substituting DE759’s internally–threaded support tube for Rae’s
steel strip to reach the mechanism of claim 1, one necessarily also reaches
the claimed mechanism whereby the receiver (i.e., DE759’s support tube)
“comprises one threaded portion” (claim 2).
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 2 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
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3. Dependent Claim 3
Dependent claim 3 further limits the adjuster of claim 2 such that it
“comprises another threaded portion, said one threaded portion of said
receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001, 4:42–45.
Petitioner contends that
DE759’s height–adjustable screw mechanism consists of a height–
adjustable screw (the adjuster) seated in a support tube welded to a base
plate (the receiver). Ex. 1003 at ¶ 97; Ex. 1015 at 3–4, FIGS. 3/10,
4/10. DE759’s height-adjustable screw is expressly depicted as having
threads. 1003 at ¶ 97; Ex. 1015 at FIGS. 3/10, 4/10. DE759 also
teaches that the height-adjustable screw is movable relative to the
support tube (the receiver) to enable the floor to be leveled. Ex. 1003
at ¶ 98; Ex. 1015 at 4.
Pet. 30.
Patent Owner has provided no argument challenging Petitioner’s
contention.
In substituting DE759’s height-adjustable screw mechanism, which
not only includes an internally-threaded support tube but also includes the
threaded screw (as shown in DE759 Figs. 3 and 4) for Rae’s steel strip to
reach the mechanism of claim 1, one necessarily also reaches the claimed
mechanism having “another threaded portion [i.e., DE759’s threaded screw],
said one threaded portion of said receiver [i.e., DE759’s internally threaded
support tube 14] threadingly engaging said another threaded portion of said
adjuster to produce said relative movement between said receiver and said
adjuster” (claim 3).
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Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 3 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
4. Dependent Claim 4
Dependent claim 4 further limits the base of claim 1 such that it
“comprises a beam and a plate connected to said beam, said receiver being
connected to said plate.” Ex. 1001 at 4:47–48.
Petitioner contends that
Rae’s flooring system includes a beam 21 (the base) to which a strip of
thick steel 24 (the receiver) is welded. Ex. 1003 at ¶102; Ex. 1014 at
5:33–35. And, as also described above, it would have been obvious to
one skilled in the art to replace Rae’s strip of thick steel with DE759’s
internally-threaded support tube (14) welded to base plate (12).
Ex. 1003 at ¶ 103; Ex. 1015 at 14; cl. 14. The resulting structure would
comprise a beam and a plate connected to said beam, with said receiver
being connected to said plate. Ex. 1003 at ¶ 103.
Pet. 31.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization of Rae’s flooring system as including a
strip of thick steel 24 (corresponding the “receiver” in the claim) welded to a
beam 21 (the “base”) is accurate. See Rae Fig. 3 and 5:33–35. Petitioner’s
characterization of DE759 as disclosing a support tube (14) (the “receiver”)
welded to base plate (12) is accurate. See Ex. 1015, Figs. 3, 4, and 14.
Substituting DE759’s support tube (14)/base plate (12) for Rae’s steel
strip (24) yields, as expected the combination of “a beam [i.e., Rae’s beam
21] and a plate [i.e., DE759’s plate (12)] connected to said beam, said
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receiver [i.e., DE759’s support tube (14)] being connected to said plate”
(claim 4) as claimed. “When a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR at 416.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 4 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
5. Dependent Claim 5
Dependent claim 5 further limits the beam, plate, and receiver of
claim 4 such that they “comprise metallic members, said beam being
connected to said plate including one weld and said receiver being connected
to said plate including another weld.” Ex. 1001, 4:50–52.
Petitioner contends that
the combination of DE759’s internally–threaded support tube (14)
welded to base plate (12) with Rae’s beam 21 yields a structure having
a beam . . . connected to said plate and a receiver . . . connected to said
plate. Ex. 1003 at ¶ 107. DE759 teaches that the internally–threaded
support tube (14) can be made of steel and is welded to base plate (12).
Id. at ¶ 108; Ex. 1015 at 6. Rae teaches that beam 21 is also made of
steel and that strip of thick steel 24 (the receiver) is welded to beam 21.
Ex. 1003 at ¶ 108; Ex. 1014 at 5:22–23, 33–35. It would therefore have
been obvious to one skilled in the art at the time the invention was made
to use a weld to connect DE759’s base plate (12) to Rae’s beam 21.
Ex. 1003 at ¶ 109.
Pet. 32.
Patent Owner has provided no argument challenging Petitioner’s
contention.
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Petitioner’s characterization of Rae as disclosing a beam 21 made of
steel and a strip of thick steel 24 welded to beam 21 is accurate. See Rae
Fig. 3, 5:8 and 33. Petitioner’s characterization of DE759 as disclosing a
steel support tube 14 welded to base plate 12 is accurate. See DE759 Figs. 3
and 4 and 6.
Accordingly, the prior art discloses a beam (Rae beam 21), plate
(DE759 base plate 12), and receiver (either Rae’s strip 24 or DE’s support
tube 14) “compris[ing] metallic members” as claim 5 requires.
Regarding “said beam being connected to said plate including one
weld and said receiver being connected to said plate including another
weld,” in substituting DE759’s support tube (14)/base plate (12) which are
welded to each other for Rae’s steel strip (24) which is welded to beam (21)
yields, as expected, DE759’s support tube (14)/base plate (12) (welded to
each other) welded to Rae’s beam (21). As Petitioner argues, as a result,
“‘said beam [would be] connected to said plate including one weld and said
receiver being connected to said plate including another weld’” Pet. 33
(quoting claim 5). “When a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR at 416.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 5 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
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6. Dependent Claim 6
Dependent claim 6 further limits the receiver of claim 4 such that it
“comprises one threaded portion.” Ex. 1001 at 4:54.
Petitioner contends that “[c]laim 6 further recites that said receiver
comprises one threaded portion. Ex. 1001 at 4:53–54. This limitation is
identical to that of claim 2, discussed supra. Ex. 1003 at ¶ 112.” Pet. 33.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 6 is substantively the same as claim 2.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 2, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 6 would have been unpatentable as obvious over the
combined teachings of Rae and DE759.
7. Dependent Claim 7
Dependent claim 7 further limits the adjuster of claim 1 such that it
“comprises another threaded portion, said one threaded portion of said
receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001, 4:56–59.
Petitioner contends that “[t]his limitation is identical to that of claim
3, discussed supra. Ex. 1003 at ¶ 114.” Pet. 34.
Patent Owner has provided no argument challenging Petitioner’s
contention.
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The record supports Petitioner’s view that, for all practical purposes,
claim 7 is substantively the same as claim 3.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 3, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 7 would have been unpatentable as obvious over the
combined teachings of Rae and DE759.
8. Dependent Claim 8
Dependent claim 8 further limits the glass floor unit of claim 1 such
that it “includes a cavity and said support comprises a sheet, said sheet being
rotatable relative to said adjuster for movement within the cavity of said
glass floor unit.” Ex. 1001 at 4:61–63.
Petitioner contends that
Both Rae and DE759 disclose a space or cavity between the
upper layer of floor panels and the lower layer of fire protective panels.
Ex. 1003 at ¶ 117; Ex. 1014 at 5:66–6:3; Ex. 1015 at 14. Both Rae and
DE759 also disclose that the support (Rae’s glazing bars 30 and
DE759’s support plate 22) fits within this space or cavity. Ex. 1003 at
¶ 117; Ex. 1014 at 2:24–30; Ex. 1015 at 14.
Pet. 35.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization is accurate. Rae Fig. 3 and DE759 Figs.
3 and 4 show a cavity between upper and lower floor panels. They further
show Rae’s glazing bars 30 and DE759’s support plate 22 within their
respective cavities.
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Petitioner concedes that “Rae’s support [i.e., glazing bars 30] is not
rotatable.” Pet. 35. However, according to Petitioner, “DE759’s support
plate 22 is rotatable. Ex. 1003 at ¶ 118.” Id.
Patent Owner has provided no argument challenging this contention.
Petitioner’s characterization of that DE759’s support plate 22 is
rotatable is supported. As Mr. Macfarlane explains
DE759 discloses that “[t]he screw in turn holds a support plate 22 on
its upper side, on which the actual base layer [of the upper flooring]
rests.” Ex. 1015 at 14. Because support plate 22 is “[held] on [the]
upper side” of the screw head, support plate 22 will necessarily either
rotate with the screw (if immovably held, e.g. welded) or rotate
independently of the screw (if movably held, e.g. threaded).
Ex. 1003 ¶ 118. Given that the support plate is held by a screw, which
rotates, the support plate necessarily rotates with the screw, irrespective of
how the support plate is attached to the screw.
Petitioner further contends that the limitation “support comprises a
sheet” covers DE759’s support plate 22. According to Petitioner,
it is well known by those skilled in the art, and was at the time the
alleged invention was made, that a “plate” (such as support plate 22) is
“a thin, flat sheet or strip of metal or other material.” Ex. 1003 at ¶ 117.
Moreover, support plate 22 is depicted as being a thin, flat piece of
metal, i.e., a sheet or plate. Id.; Ex. 1015 at FIG. 3/10, 4/10
Pet. 35–36.
Patent Owner has provided no argument challenging Petitioner’s
contention.
We agree that DE759 Figs. 3 and 4 depict support plate 22 as a sheet,
thereby meeting the “support comprises a sheet” limitation.
Accordingly, given that each of Rae and DE759 include a cavity, and
DE759 provides for a support (DE759’s support tube 14) comprising a sheet
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rotatable relative to the adjuster for movement within the cavity of said glass
floor unit, in substituting DE759’s support tube (14, see DE759’s Fig. 3),
including DE759’s height–adjustable threaded mechanism seated therein, for
Rae’s steel strip (24; see Rae Fig. 3) to reach the mechanism of claim 1, one
also reaches the mechanism defined by claim 8.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 8 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
9. Dependent Claim 9
Dependent claim 9 further limits the receiver of claim 8 such that it
“comprises one threaded portion.” Ex. 1001, 4:65.
Petitioner contends that “[t]his limitation is identical to that of claims
2 and 6, discussed supra. Ex. 1003 at ¶ 122.” Pet. 36.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 9 is substantively the same as claims 2 and 6.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 2 and
6, we are persuaded the Petition demonstrates by a preponderance of the
evidence that dependent claim 9 would have been unpatentable as obvious
over the combined teachings of Rae and DE759.
10. Dependent Claim 10
Dependent claim 10 further limits the adjuster of claim 9 such that it
“comprises another threaded portion, said one threaded portion of said
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receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001 at 4:67–5:3.
Petitioner contends that “[t]his limitation is identical to that of claims
3 and 7, discussed supra. Ex. 1003 at ¶ 124.” Pet. 36.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that claim 10 is substantively
the same as claims 3 and 7.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 3 and
7, we are persuaded the Petition demonstrates by a preponderance of the
evidence that dependent claim 10 would have been unpatentable as obvious
over the combined teachings of Rae and DE759..
11. Dependent Claim 11
Dependent claim 11 further limits the base of claim 10 such that it
“comprises a beam and a plate connected to said beam, said receiver being
connected to said plate. Ex. 1001, 5:5–6.
Petitioner contends that “this limitation is disclosed by the
combination of Rae and DE759 for at least the same reasons as provided
with respect to claim 4.” Pet. 37.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 11 is substantively the same as claim 4.
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Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 4, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 11 would have been unpatentable as obvious over the
combined teachings of Rae and DE759.
12. Dependent Claim 12
Dependent claim 12 further limits the beam, plate, and receiver of
claim 11 such that they “comprise metallic members, said beam being
connected to said plate including one weld and said receiver being connected
to said plate including another weld.” Ex. 1001, 5:8–10.
Petitioner contends that “[t]his limitation is identical to that of claim
5, discussed supra. Ex. 1003 at ¶ 128. Accordingly, this limitation is
disclosed by the combination of Rae and DE759 for at least the same reasons
as provided with respect to claim 4 [sic, 5].” Pet. 38.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 12 is substantively the same as claim 5.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 5, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 12 would have been unpatentable as obvious over the
combined teachings of Rae and DE759.
G. Ground III
Petitioner challenges claims 1–12 as obvious under 35 U.S.C.
§ 103(a) over DE230 and Rae. Pet. 4, 39–56.
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1. Independent Claim 1
Petitioner relies on the combination of DE230 and Rae for the “glass
floor unit.” Pet. 39–41. For the “base,” “support,” “receiver,” “adjuster,”
and “connector,” Petitioner relies on DE230. Id. at 41–46. According to
Petitioner, “one skilled in the art would have been motivated to combine the
teachings of DE230 and Rae . . . [to] arrive at the invention of claim 1
without undue experimentation and with a reasonable expectation of
success.” Id. at 46.
(a) “a glass floor unit”
Claim 1 recites “a glass floor unit.” Ex. 1001, 4:20.
Both parties have agreed that the “glass floor unit” of claim 1
comprises two components. See Pet. 22 (citing Exhibit 1001, 2: 47–52
(“[g]lass floor unit 14 includes an upper portion 20 . . . [and a] [l]ower or
bottom portion 22 . . .”); Prelim. Resp. 4 (“a two-component, one-piece glass
floor unit such as that claimed in claim 1 of the ʼ709 Patent” (emphasis
added)).
Petitioner contends that
DE230 discloses a multi-layer flooring system having an upper
layer of floor panels for walking upon (5) and a lower layer of fire
protection panels (206) and including a height-adjustable screw
mechanism supporting the upper layer. Ex. 1003 at ¶ 134; Ex. 1016 at
24, FIGS. 3/10, 4/10.
Pet. 40.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The evidence supports Petitioner’s position.
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Figs. 3/10 (“Fig. 3”) and 4/10 (“Fig. 4”) of Ex. 1016 are reproduced
below.

Fig. 3 is a sectional view through a section of the raised floor according to
an embodiment of the DE230 invention. Id. Fig. 3.
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Fig. 4 is sectional view through a section of the raised floor according to
another embodiment of the DE230 invention. Id. Fig. 4.
Fig. 3 shows a floor unit having two portions: “floor panels 5” and
“fire protection panels 206.” Ex. 1016, 24.
Accordingly, DE230 discloses a “floor unit” as claimed.
Petitioner concedes that “DE230 does not, however, disclose that
either the upper layer of floor panels or the lower layer of fire protection
panels is composed of glass.” Pet. 40.
In that regard, Petitioner contends that
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Rae also discloses a multi-layer fire protective flooring system
having an upper layer of panels for walking upon and a lower layer of
fire protective panels and including an adjustable mechanism
supporting the upper layer. Ex. 1003 at ¶ 135. Rae teaches that both
layers are made of glass, the upper layer being composed of structural
glass and the lower layer being composed of fire–rated glass. Id.;
Ex. 1014 at 1:36–42.
Id. at 40.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The evidence supports Petitioner’s position.
Rae specifically describes its layers as being made of glass. Ex. 1014,
1:36–37 (“a fire rated glass flooring system comprising a first layer of glass
and a second layer of glass.”).
According to Petitioner, “[t]he combination of Rae and DE230
therefore teaches the glass floor unit element of claim 1. Ex. 1003 at ¶ 138.”
Pet. 41.
As Mr. Macfarlane explains,
[i]t is well known in the construction field, and was at the time that the
invention was made, that glass flooring can provide multiple benefits
in building construction, including enhanced lighting within a building
and dramatic viewing opportunities (as seen, for example, in many
modern skyscrapers, including the CN Tower in Toronto, the Tokyo
Sky Needle and even the refurbished Eiffel Tower in Paris).
Ex. 1003 ¶ 137.
Substituting Rae’s glass layers for DE230’s layers yields, predictably,
to a “glass floor unit” as claimed. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416. “When a patent ‘simply
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arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” Id.
Based on our review of the evidence of record, Petitioner has shown
that the combination of DE230 and Rae would have led one of ordinary skill
in the art to “a glass floor unit” having two components as claimed.
(b) “a base”
Claim 1 recites “a base, said base positioned to contact the
foundation and extending therefrom without relative movement between the
base and the foundation.” Ex. 1001, 4:21–23.
Petitioner contends that “DE230’s base plate 12 corresponds to the
claimed base. Ex. 1003 at ¶ 141.” Pet. 42.
Patent Owner has provided no argument challenging Petitioner’s
contention.
As Mr. Macfarlane explains, “[a]s shown in FIGS. 3 and 4 of DE230,
base plate 12 rests on a subfloor (unlabeled, but represented with diagonal
shading lines). Ex. 1016 at FIGS. 3/10, 4/10. One skilled in the art would
understand from these FIGS. and the corresponding description that the base
plate is not intended to and does not move relative to the foundation.”
Ex. 1003 ¶ 142.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a base” as claimed.
(c) “a support”
Claim 1 recites “a support, said support positioned to contact the glass
floor unit.” Ex. 1001 at 4:24–25.
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According to Petitioner, because the floor layer rests on DE230’s
support plate 22, “DE230’s support plate 22 corresponds to the claimed
support. Ex. 1003 at ¶ 147.” Pet. 43.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization is consistent with DE230, which
discloses “a support tube . . . wherein the upper part of the support in turn
comprises a thread, on which a nut is provided in a height-adjustable
manner, and a support or head plate, on which the floor layer rests.”
Ex. 1016, 30 (emphasis added). This meets the claim limitation of “a
support, said support positioned to contact the glass floor unit.”
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a support” as claimed.
(d) “a receiver”
Claim 1 recites “a receiver, said receiver configured for extension
from said base and fixation to said base to prevent relative movement
between said receiver and said base.” Ex. 1001, 4:26–28.
Petitioner contends that DE230’s “support tube corresponds to the
receiver of claim 1. Ex. 1003 at ¶ 152.” Pet. 43.
Patent Owner has provided no argument challenging Petitioner’s
contention.
As Mr. Macfarlane explains,
DE230 discloses a height-adjustable screw mechanism in contact
with the underside of the upper layer of floor panels that enables
adjustment of the height of the upper layer relative to the foundation to
eliminate any unevenness. Ex. 1016 at 4–5, FIGS. 3/10, 4/10.
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DE230’s height-adjustable screw mechanism consists of a
height–adjustable screw seated in a support tube. Ex. 1016 at 4–5,
FIGS. 3/10, 4/10. DE230 teaches that the “support tube 14 . . . is welded
to a base plate 12 and has an internal thread on the upper side, into
which a screw 18 is screwed in a height–adjustable manner and secured
at the desired height by a locknut 20.” Ex. 1016 at 23.
Since DE230’s support tube 14 has an internal thread (i.e.,
configured for extension from said base) and is welded (fixed) to a base
plate, support tube 14 corresponds to the receiver of claim 1.
Ex. 1003 ¶¶ 150–152.
In other words, given that the height–adjustable screw mechanism
seated in DE230’s support tube 14 (i.e., the “receiver”) (Ex. 1016, Figs. 3
and 4) enables adjustment of the height of the upper layer relative to the
foundation, DE230’s support tube 14 is “configured for extension from said
base” as claimed. And, given that DE230’s support tube 14 (i.e., the
“receiver”) is welded to base plate 12 (i.e., the “base”) (see Ex. 1016, 23), it
is “[fixed] to said base to prevent relative movement between said receiver
and said base” as claimed.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a receiver” as claimed.
(e) “an adjuster”
Claim 1 recites “an adjuster, said adjuster configured to interact with
said receiver and to produce relative movement between said receiver and
said adjuster.” Ex. 1001, 4:29–31.
According to Petitioner, DE230’s “height–adjustable screw
corresponds to the adjuster element of claim 1. Ex. 1003 at ¶ 157.” Pet. 44.
Patent Owner has provided no argument challenging Petitioner’s
contention.
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Mr. Macfarlane explains,
DE230 discloses a multi-layer flooring system having a height-
adjustable screw mechanism in contact with the underside of the upper
layer of floor panels that enables adjustment of the height of the upper
layer relative to the foundation to eliminate any unevenness. Ex. 1016
at 4–5, 23, FIGS. 3/10, 4/10.
. . . DE230’s height-adjustable screw mechanism consists of a
height–adjustable screw 18 seated in a support tube 14 having an
internal thread. Ex. 1016 at 23, FIGS. 3/10, 4/10.
Ex. 1003 ¶¶ 155–156.
Thus, DE230’s height-adjustable screw 18 is “configured to interact
with [the] receiver (i.e., support tube 14) and to produce relative movement
between [the] receiver and said adjuster” as claimed.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “an adjuster” as claimed.
(f) “a connector”
Claim 1 recites “a connector, said connector linking said support to
said adjuster to effect simultaneous movement of said support with said
relative movement between said receiver and said adjuster, said movement
of said support exerting a force on said glass floor unit to effect relative
movement between said glass floor and said base contacting said
foundation.” Ex. 1001, 4:32–38.
Petitioner contends that “DE230’s nut . . . corresponds to the claimed
connector (if connector is just a nut) . . . . Ex. 1003 at ¶ 163.” Pet. 45–46.
Petitioner also views “DE230’s nut and height–adjustable screw together
[as] correspond[ing] to the claimed connector (if connector is a nut and bolt
together). [Ex. 1003 at ¶ 163].” Id at 46.
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Patent Owner has provided no argument challenging Petitioner’s
contention.
As can be seen in Figs. 3 and 4, DE230 discloses a screw (18) and a
locknut (20) within a support tube (14). See Ex. 1016, 23. “The screw in
turn holds a support plate 22 on its upper side, on which the actual base layer
rests.” Id. The figures also show floor panels (5), a base plate 12, to which
the support tube 14 is welded, contacting a foundation. Id.
As Mr. Macfarlane explains, the nut “causes movement of the support
plate resting on top of it (and the glass panel(s) resting on those) when the
adjuster (the height-adjustable screw) is moved relative to the receiver (the
support tube having an internal thread).” Ex. 1003 ¶ 163. Similarly with
respect to DE230’s nut and height–adjustable screw together,
Mr. Macfarlane explains that “they cause movement of the support plate
resting on top (and the glass panel(s) resting on those).” Id.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses a locknut (20) or a screw (18)/locknut (20) mechanism
linking the support, i.e., support plate 22 (Fig. 3) or 322 (Fig. 4), to the
height-adjustable screw mechanism and that this effects simultaneous
movement of said support with said relative movement between a receiver,
i.e., support tube 14, and said adjuster, said movement of said support
exerting a force on floor panels (5) to effect relative movement between said
floor panels and a base (12) contacting a foundation, thereby showing
DE230 discloses “a connecter” as claimed.
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(g) The motivation to combine DE230 and Rae with a
reasonable expectation of success
Based on our review of the evidence of record, Petitioner has shown
that the combination of DE230 and Rae would lead one of ordinary skill in
the art to the “glass floor unit” as claimed. Petitioner has also shown that
DE230 discloses “base,” “support,” “receiver,” “adjuster” and “connector”
as claimed.
Petitioner further contends that
Each and every element of claim 1 of the ’709 Patent is therefore
disclosed by the combination of DE230 and Rae. Ex. 1003 at ¶ 165.
Moreover, one skilled in the art would have been motivated to combine
the teachings of DE230 and Rae in the manner described above and
therefore arrive at the invention of claim 1 without undue
experimentation and with a reasonable expectation of success. Id.
Pet. 46.
The only difference between DE230 and what is claimed is, as
Petitioner acknowledges, “DE230 does not, however, disclose that either the
upper layer of floor panels or the lower layer of fire protection panels is
composed of glass.” Pet. 40.
In that regard, as we explained in Section II.G.1.(a)., substituting
Rae’s glass layers for DE230’s layers yields, predictably, a “glass floor unit”
as claimed. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
KSR, 550 U.S. at 416. “When a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Id.
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Patent Owner argues, in its entirety:
DE230 adds very little to the disclosure of DE759 and merely
shows a jack which supports a floor above.
Again, patent owner relies on its arguments with respect to
Challenge 1 as rebutting petitioner's assertions.
PO Resp. 9.
For the reasons discussed, DE230 shows more than “a jack which
supports a floor above.” It discloses much of what is claimed.
We do not understand the relevance of Patent Owner’s arguments
with respect to Ground I (i.e. anticipation by an offer for sale of the claimed
invention to WOJV) to the instant ground (i.e., obviousness over the
combination of DE230 and Rae).
We are unpersuaded by Patent Owner’s arguments that Petitioner’s
position is in error.
Accordingly. Petitioner’s reasoning is sufficient to support a
determination of obviousness.
(h) Conclusion
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that independent
claim 1 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
2. Dependent Claim 2
Dependent claim 2 further limits the receiver of claim 1 such that it
“comprises one threaded portion.” Ex. 1001 at 4:40.
Petitioner contends that
as described above, DE230 teaches that the “support tube 14 . . . is
welded to a base plate 12 and has an internal thread on the upper side,
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into which a screw 18 is screwed in a height-adjustable manner and
secured at the desired height by a locknut 20.” Ex. 1016 at 23.
Pet. 47.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization is consistent with DE230’s disclosure
which expressly states that the “support tube 14 that is welded to a base plate
12 and has an internal thread on the upper side, into which a screw 18 is
screwed in a height-adjustable manner and secured at the desired height by a
locknut 20.” Ex. 1016, 23 (emphasis added).
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 2 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
3. Dependent Claim 3
Dependent claim 3 further limits the adjuster of claim 2 such that it
“comprises another threaded portion, said one threaded portion of said
receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001, 4:42–45.
Petitioner contends that
DE230’s height-adjustable screw mechanism consists of a height-
adjustable screw (the adjuster) seated in a support tube (the receiver).
Ex. 1003 at ¶ 173; Ex. 1016 at 4–5, 23, FIGS. 3/10, 4/10. DE230’s
height–adjustable screw is expressly depicted as having threads. 1003
at ¶ 174; Ex. 1016 at FIGS. 3/10, 4/10. DE230 also teaches that the
height–adjustable screw is movable relative to the support tube (the
receiver) to permit leveling of the floor. Ex. 1003 at ¶ 174; Ex. 1016 at
4.
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Pet. 48.
Patent Owner has provided no argument challenging Petitioner’s
contention.
DE230’s height-adjustable screw mechanism not only includes an
internally–threaded support tube but also includes the threaded screw (as
shown in DE230 Figs. 3 and 4). Accordingly, DE230’s mechanism has
“another threaded portion [i.e., DE230’s threaded screw], said one threaded
portion of said receiver [i.e., DE230’s internally threaded support tube 14]
threadingly engaging said another threaded portion of said adjuster to
produce said relative movement between said receiver and said adjuster”
Ex. 1016, claim 3.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 3 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
4. Dependent Claim 4
Dependent claim 4 further limits the base of claim 1 such that it
“comprises a beam and a plate connected to said beam, said receiver being
connected to said plate.” Ex. 1001 at 4:47–48.
Petitioner contends that
Rae’s flooring system includes a beam 21 (the base) to which a strip of
thick steel 24 (the receiver) is welded. Ex. 1003 at ¶ 178; Ex. 1014 at
5:33–35. It would have been obvious to one skilled in the art to use
Rae’s beam 21 with DE230’s internally-threaded support tube (14)
welded to base plate (12) to provide a more stable base than base plate
(12) alone could provide. Ex. 1003 at ¶ 179. The resulting structure
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would comprise a beam and a plate connected to said beam, with said
receiver being connected to said plate. Id.
Pet. 49.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization of Rae’s flooring system as including a
strip of thick steel 24 (corresponding the “receiver” in the claim) welded to a
beam 21 (the “base”) is accurate. See Ex. 1014, Fig. 3, 5:33–35.
Petitioner’s characterization of DE230 as disclosing an internally–threaded
support tube (14) (the “receiver”) welded to base plate (12) is accurate. See
Ex. 1016, 23, Figs. 3, 4.
Incorporating Rae’s beam (21) with DE230’s support tube (14)/base
plate (12) yields, as expected, the combination of “a beam [i.e., Rae’s beam
21] and a plate [i.e., DE230’s plate (12)] connected to said beam, said
receiver [i.e., DE230’s support tube (14)] being connected to said plate”
(claim 4) as claimed. “When a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR at 416.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 4 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
5. Dependent Claim 5
Dependent claim 5 further limits the beam, plate, and receiver of
claim 4 such that they “comprise metallic members, said beam being
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connected to said plate including one weld and said receiver being connected
to said plate including another weld.” Ex. 1001 at 4:50–52.
Petitioner contends that
the combination of DE230’s internally-threaded support tube (14)
welded to base plate (12) with Rae’s beam 21 yields a structure having
a beam . . . connected to said plate and a receiver . . . connected to said
plate. Ex. 1003 at ¶ 183. DE230 teaches that the internally-threaded
support tube (14) can be made of steel and is welded to base plate (12).
Id.; Ex. 1016 at 10. Rae teaches that beam 21 is also made of steel and
that strip of thick steel 24 (the receiver) is welded to beam 21. Ex. 1003
at ¶ 183; Ex. 1014 at 5:22–23, 33–35. It would therefore have been
obvious to one skilled in the art at the time the invention was made to
use a weld to connect DE230’s base plate (12) to Rae’s beam 21.
Ex. 1003 at ¶ 184.
Pet. 50.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization of Rae as disclosing a beam 21 made of
steel and a strip of thick steel 24 welded to beam 21 is accurate. See Ex.
1014, Fig. 3, 5:8, 5:33. Petitioner’s characterization of DE230 as disclosing
a steel support tube 14 welded to base plate 12 is accurate. See Ex. 1014,
10, Figs. 3, 4.
Accordingly, the prior art discloses a beam (Rae beam 21), plate
(DE230 base plate 12), and receiver (either Rae’s strip 24 or DE230’s
support tube 14) “compris[ing] metallic members” as claim 5 requires.
Regarding “said beam being connected to said plate including one
weld and said receiver being connected to said plate including another
weld,” given that Rae’s steel strip (24) is welded to beam (21), one would
have been led to weld DE230’s support tube (14)/base plate (12) to beam
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(21) and thereby yielding, as expected, DE759’s support tube (14)/base plate
(12) (welded to each other) welded to Rae’s beam (21). As Petitioner
argues, as a result, “‘said beam [would be] connected to said plate including
one weld and said receiver being connected to said plate including another
weld’.” Pet. 50–51 (quoting Ex. 1001, claim 5). “When a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR at 416.
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 5 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
6. Dependent Claim 6
Dependent claim 6 further limits the receiver of claim 4 such that it
“comprises one threaded portion.” Ex. 1001 at 4:54.
Petitioner contends that “[c]laim 6 further recites that said receiver
comprises one threaded portion. Ex. 1001 at 4:53–54. This limitation is
identical to that of claim 2, discussed supra. Ex. 1003 at ¶ 187.” Pet. 51.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 6 is substantively the same as claim 2.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 2, we
are persuaded the Petition demonstrates by a preponderance of the evidence
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that dependent claim 6 would have been unpatentable as obvious over the
combined teachings of DE230 and Rae.
7. Dependent Claim 7
Dependent claim 7 further limits the adjuster of claim 1 such that it
“comprises another threaded portion, said one threaded portion of said
receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001 at 4:56–59.
Petitioner contends that “[t]his limitation is identical to that of claim
3, discussed supra. Ex. 1003 at ¶ 189.” Pet. 52.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that claim 7 is substantively the
same as claim 3.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 3, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 7 would have been unpatentable as obvious over the
combined teachings of DE230 and Rae.
8. Dependent Claim 8
Dependent claim 8 further limits the glass floor unit of claim 1 such
that it “includes a cavity and said support comprises a sheet, said sheet being
rotatable relative to said adjuster for movement within the cavity of said
glass floor unit.” Ex. 1001 at 4:61–63.
Petitioner contends that
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DE230 discloses that there is a space or cavity between the upper
layer of floor panels and the lower layer of fire protective panels.
Ex. 1003 at ¶ 192; Ex. 1016 at 23–24. DE230 also discloses that the
support (support plate 22) fits within this space or cavity. Id. at ¶ 193;
Ex. 1016 at 23.
Pet. 52–53.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner’s characterization is accurate. DE230’s Figures 3 and 4
show a cavity between upper and lower floor panels.
Petitioner further contends that DE230’s “support plate 22 is rotatable.
Ex. 1003 at ¶ 194.” Pet. 53.
Patent Owner does not disagree.
Petitioner’s characterization of that DE230’s support plate 22 is
rotatable is supported. As Mr. Macfarlane explains,
DE230 discloses that “[t]he screw in turn holds a support plate 22 on
its upper side, on which the actual base layer [of the upper flooring]
rests.” Ex. 1016 at 23. Because support plate 22 is “[held] on [the]
upper side” of the screw head, support plate 22 will necessarily either
rotate with the screw (if immovably held, e.g. welded) or rotate
independently of the screw (if movably held, e.g. threaded).).
Ex. 1003 ¶ 195. Given that the support plate is held by a screw, which
rotates, the support plate necessarily rotates with the screw, irrespective of
how the support plate is attached to the screw.
Petitioner further contends that the limitation “support comprises a
sheet” covers DE230’s support plate 22. According to Petitioner,
it is well known by those skilled in the art, and was at the time the
alleged invention was made, that a “plate” (such as support plate 22) is
“a thin, flat sheet or strip of metal or other material.” Ex. 1003 at ¶ 196.
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Moreover, support plate 22 is depicted as being a thin, flat piece of
metal, i.e., a sheet or plate. Id.; Ex. 1015 at FIG. 3/10, 4/10
Pet. 53–54.
Patent Owner has provided no argument challenging Petitioner’s
contention.
We agree that DE230’s Figures 3 and 4 depict support plate 22 as a
sheet, thereby meeting the “support comprises a sheet” limitation.
Accordingly, given that DE230 includes a cavity in a floor unit and
provides for a support (DE230’s support tube 14) comprising a sheet
rotatable relative to the adjuster for movement within the cavity of the floor
unit, DE230 meets the subject matter defined by claim 8, but for the floor
unit being made of glass, which “glass” we addressed above (see Section
II.G.1.(a).
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that dependent
claim 8 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
9. Dependent Claim 9
Dependent claim 9 further limits the receiver of claim 8 such that it
“comprises one threaded portion.” Ex. 1001, 4:65.
Petitioner contends that “[t]his limitation is identical to that of claims
2 and 6, discussed supra. Ex. 1003 at ¶ 199.” Pet. 54.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 9 is substantively the same as claims 2 and 6.
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Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 2 and
6, we are persuaded the Petition demonstrates by a preponderance of the
evidence that dependent claim 9 would have been unpatentable as obvious
over the combined teachings of DE230 and Rae.
10. Dependent Claim 10
Dependent claim 10 further limits the adjuster of claim 9 such that it
“comprises another threaded portion, said one threaded portion of said
receiver threadingly engaging said another threaded portion of said adjuster
to produce said relative movement between said receiver and said adjuster.”
Ex. 1001 at 4:67–5:3.
Petitioner contends that “[t]his limitation is identical to that of claims
3 and 7, discussed supra. Ex. 1003 at ¶ 201.” Pet. 55.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that claim 10 is substantively
the same as claims 3 and 7.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 3 and
7, we are persuaded the Petition demonstrates by a preponderance of the
evidence that dependent claim 10 would have been unpatentable as obvious
over the combined teachings of DE230 and Rae.
11. Dependent Claim 11
Dependent claim 11 further limits the base of claim 10 such that it
“comprises a beam and a plate connected to said beam, said receiver being
connected to said plate.” Ex. 1001 at 5:5–6.
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Petitioner contends that “this limitation is disclosed by the
combination of DE230 and/or Rae for at least the same reasons as provided
with respect to claim 4.” Pet. 56.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that claim 11, for all practical
purposes, is substantively the same as claim 4.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 4, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 11 would have been unpatentable as obvious over the
combined teachings of DE230 and Rae.
12. Dependent Claim 12
Dependent claim 12 further limits the beam, plate, and receiver of
claim 11 such that they “comprise metallic members, said beam being
connected to said plate including one weld and said receiver being connected
to said plate including another weld.” Ex. 1001 at 5:8–10.
Petitioner contends that “[t]his limitation is identical to that of claim
5, discussed supra. Ex. 1003 at ¶ 205. Accordingly, this limitation is
disclosed by the combination of DE230 and/or Rae for at least the same
reasons as provided with respect to claim 4 [sic, 5].” Pet. 56.
Patent Owner has provided no argument challenging Petitioner’s
contention.
The record supports Petitioner’s view that, for all practical purposes,
claim 12 is substantively the same as claim 5.
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Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claim 5, we
are persuaded the Petition demonstrates by a preponderance of the evidence
that dependent claim 12 would have been unpatentable as obvious over the
combined teachings of DE230 and Rae.
H. Ground IV
Petitioner challenges claims 1, 7, and 8 as invalid under 35 U.S.C.
§ 112 for being indefinite. Pet. 4, 57–61.
Petitioner asserts that claims 1, 7, and 8 fail to comply with the
requirements of 35 U.S.C. § 112(b) because one skilled in the art would not
be able to determine, with a reasonable degree of certainty, the scope of
claims 1, 7, and 8. Pet. 57–61.
1. Independent Claim 1
Petitioner asserts that the claim term “connector” in claim 1 is
“indefinite as there is no way to determine whether it is a single object, as
originally filed, or two objects combined together, as provided in the
amendment to the specification.” Id. at 58. Petitioner points out that “[a]s
originally filed on July 1, 2016, the specification of the ’709 Patent disclosed
that ‘[t]he connector may take the form of a stop, which may be a threaded
nut.’” Id. at 57 (quoting Ex. 1002, 115 (excerpts from the prosecution
history of the ’709 patent)). However, “the Patent Owner added the
following disclosure to the specification: ‘[t]hus, nut 70 and bolt 66 serves as
a connector 71 linking support 58 to adjuster 64.’” Id. at 58 (citing Ex. 1002
at 60) (emphasis added by Petitioner).
Patent Owner argues that
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Petitioner unfairly interprets the term “connector” to
conclude that a “connector” is a single object. Petitioner offers
the Macfarlane declaration, Pg. 61, Paragraph 211, [in] support
of his position.
It is asserted that a “connector” may include multiple
elements functioning as something that connects.
Thus, it is believed that the wording of independent claim
1 of the ’709 Patent is definitive.
PO Resp. 9.
We are persuaded by Patent Owner’s argument. The term
“connector” is indeed broad in scope and, as Petitioner explains, it could
cover either a threaded nut or the combination of a nut and bolt. But that
does not alone make the claim indefinite. This is so because “[m]erely
claiming broadly does not . . . prevent the public from understanding the
scope of the patent.” Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d
1339, 1352 (Fed. Cir. 2010) (citing In re Gardner, 427 F.2d 786, 788 (1970)
(“Breadth is not indefiniteness.”)).”
We are unpersuaded the Petition demonstrates that independent claim
1 is indefinite.
2. Dependent Claim 7
Petitioner asserts that the phrase “said one threaded portion of said
receiver” in claim 7 “lacks proper antecedent basis.” Pet. 59. Petitioner
acknowledges that claim 7 recites a “receiver” but asserts that “there is
nothing in claim 1 about that receiver having or including or comprising one
threaded portion.” Id. (citing Ex. 1001 at 4:18–38).
Patent Owner presents no arguments opposing Petitioner’s challenge
of claim 7 under Ground IV, except to say that “[c]laim 7 improperly
depends on claim 1 and should depend on claim 6.” PO Resp. 9.
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We agree that “unclear as to what part or feature of said receiver that
the term said one threaded portion is intended to refer.” Id. Based on a
plain reading of the claim, it is impossible to discern what “said one
threaded portion” is referring to. Consequently, those skilled in the art would
not be informed with any certainly about the scope of the invention. For this
reason we are persuaded the Petition demonstrates that dependent claim 7 is
indefinite.
3. Dependent Claim 8
Petitioner asserts that the phrase “said sheet being rotatable relative to
said adjuster for movement within the cavity” in claim 8 is unclear. Pet. 59–
61. Claim 8 further limits the “glass floor unit” of claim 1 so that it
“includes a cavity and said support comprises a sheet, said sheet being
rotatable relative to said adjuster for movement within the cavity of said
glass floor unit” (emphasis added). But, according to Petitioner, “[t]he
support [ ] cannot be rotatable relative to the adjuster, since [the support]
must move (rotate) simultaneously with the adjuster.” Id. at 61. Petitioner
relies, in part, on the language of claim 1 which requires “a connector, said
connector linking said support to said adjuster to effect simultaneous
movement of said support with said relative movement between said
receiver and said adjuster.”
Patent Owner argues
Claim 8 adds the element of a “cavity” 62 to claim 1 and defines
the support 58 as a “sheet.”
Thus, the “sheet” simultaneously moves with the relative
movement between the receiver 54 and the adjuster 58, as stated in
independent claim 1.
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However, the support 58, having clearance relative to adjuster
64, takes the form of [a] sheet that also rotates relative to the adjuster
within the cavity 62 of the glass floor unit 14, 16. FIG. 4 illustrates this
aspect of claim 8 and is described in Column 3, lines 61–64 of the
specification. One of ordinary skill in the art would understand the
ability of the sheet's rotational movement within cavity 62 to position
the sheet, as well as the movement of the sheet against the glass unit
when the adjuster moves relative to the receiver.
PO Resp. 9–10.
Patent Owner does not address the “connector” limitation and
therefore does not help elucidate claim 7, whereby the support is defined as
being linked to the adjuster while also being “rotatable relative to said
adjuster” (claim 8).
It is unclear how the support, which according to claim 1 is linked to
the adjuster, can also be “rotatable relative to said adjuster” (claim 8).
Based on a plain reading of the claim, which is self–contradictory, those
skilled in the art would not be informed with any certainly about the scope
of the invention.
For that reason, we are persuaded the Petition demonstrates that claim
8 is indefinite.

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III. REVISED MOTION TO AMEND
We have concluded that challenged claims 1‒12 of the ’709 patent are
unpatentable. We now turn to Patent Owner’s Revised Motion to Amend
proposing substitute claims 13–19. RMTA 1‒10.
For the reasons that follow, we deny Patent Owner’s motion.
A. Applicable Law
In a post-grant review, amended claims are not added to a patent as of
right, but rather must be proposed as a part of a motion to amend. 35 U.S.C.
§ 326(d). The Board must assess the patentability of proposed substitute
claims “without placing the burden of persuasion on the patent owner.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017) (en banc);
see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 3‒4
(PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of Aqua
Products, the Federal Circuit issued a decision in Bosch Automotive Service
Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”), as well
as a follow-up order amending that decision on rehearing. See Bosch Auto.
Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018) (Order
on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
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“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020). The Board itself also may justify any finding of unpatentability by
reference to evidence of record in the proceeding. Lectrosonics, Paper 15 at
4 (citing Aqua Products, 872 F.3d at 1311 (O’Malley, J.)). The Board may,
in certain rare circumstances, raise a ground of unpatentability that a
petitioner did not advance, or insufficiently developed, against substitute
claims proposed in opposing a motion to amend when the adversarial
process fails to provide the Board with potential arguments of patentability
with respect to the proposed substitute claims. Hunting Titan, Inc. v.
DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 at 25 (PTAB July
6, 2020) (precedential). “Thus, the Board determines whether substitute
claims are unpatentable by a preponderance of the evidence based on the
entirety of the record, including any opposition made by the petitioner.” Id.
Notwithstanding the foregoing, a patent owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 326(d) and the
procedural requirements of 37 C.F.R. § 42.221. Cf. Lectrosonics, Paper 15
at 4–8. Accordingly, a patent owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.221.
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B. Proposed Substitute Claims
“Patent Owner moves to cancel claims 1–12 and to substitute claims
13–19.” RMTA 1. Proposed substitute claims 13–19 are reproduced below
with bracketing indicating text deleted, and underlining indicating text
added, as compared to original claims 1–7, respectively.
The substitute claims are:
13. A mechanism forming a floor structure resting on a foundation,
comprising:
a glass floor unit having an outer walking surface, said glass floor
unit having a cavity;
a base, said base positioned to contact the foundation and
extending therefrom without relative movement between the base and
the foundation;
a receiver, said receiver configured for extension from said base
and for fixation to said base to prevent relative movement between said
receiver and said base;
an adjuster, said adjuster positioned in said cavity, said adjuster
configured to interact with said receiver and to produce relative
movement between said receiver and said adjuster;
a support, said support positioned to contact the glass floor unit,
said support comprising a sheet, said sheet being rotatable relative to
said adjuster for movement within said cavity of said glass floor unit;
a connector, said connector linking said sheet [support] to said
adjuster to effect simultaneous movement of said sheet [support] with
the relative movement between said receiver and said adjuster, said
movement of said sheet [support] exerting a force on said glass floor
unit to effect relative movement between said glass floor unit and said
base contacting the [said] foundation; and
a hat channel, said hat channel removably positioned over said
adjuster for permitting access to said adjuster in said cavity from said
outer walking surface.
14. The mechanism of claim 13 [l] in which said receiver comprises
one threaded portion.
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15. The mechanism of claim 14 [2] in which said adjuster comprises
another threaded portion, said one threaded portion of said receiver
threadingly engaging said another threaded portion of said adjuster to
produce said relative movement between said receiver and said
adjuster.
16. The mechanism of claim 13 [1] in which said base comprises a
beam and a plate connected to said beam, said receiver being connected
to said plate.
17. The mechanism of claim 16 [4] in which said beam, plate, and
receiver comprise metallic members, said beam [being] connected to
said plate including one weld and said receiver [being] connected to
said plate including another weld.
18. The mechanism of claim 16 [4] in which said receiver comprises
one threaded portion.
19. The mechanism of claim 18 [1] in which said adjuster comprises
another threaded portion, said one threaded portion of said receiver
threadingly engaging said another threaded portion of said adjuster to
produce said relative movement between said receiver and said
adjuster.
Patent Owner’s proposed substitute claim 13 is substantively different
from the claim it seeks to replace (i.e., claim 1). See RMTA 1–2.
First, proposed substitute claim 13 further limits the glass floor unit of
original claim 1 to “having an outer walking surface, said glass floor unit
having a cavity.”
Second, proposed substitute claim 13 further limits the adjuster of
original claim 1 to read “said adjuster positioned in said cavity.”
Third, proposed substitute claim 13 further limits the support of
original claim 1 to read:
said support comprising a sheet, said sheet being rotatable relative to
said adjuster for movement within said cavity of said glass floor unit.
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This limitation incorporates, verbatim, a portion of the subject matter recited
in original claim 8.
Fourth, proposed substitute claim 13 substitutes “sheet” for original
term “support” in describing the “connector.”
Fifth, proposed substitute claim 13 adds the limitation
a hat channel, said hat channel removably positioned over said adjuster
for permitting access to said adjuster in said cavity from said outer
walking surface.
Patent Owner’s substitute claims 14–19 are not substantively different
from the claims they seek to replace (i.e., claims 3–7, respectively), other
than their dependency. See RMTA 2–3.
Given that Patent Owner moves to substitute claims 13–19 for all the
original claims (i.e., claims 1–12) but that this only replaces original claims
1–7, Patent Owner also seeks, in effect, to cancel original claims 8–12.
Since only Patent Owner’s proposed substitute claim 13 is
substantively different beyond dependency from the claim it seeks to replace
(i.e., claim 1), we focus on substitute claim 13.
C. Statutory and Regulatory Requirements
Before considering the patentability of any substitute claims, the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R.
§ 42.221. Cf. Lectrosonics, Paper 15 at 4–8.
1. Claim Listing
A motion to amend “must include a claim listing . . . show[ing] the
changes clearly.” 37 C.F.R. § 42.221(b).
Patent Owner’s Revised Motion to Amend does so. See RMTA 1–3.
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2. Reasonable Number of Substitute Claims
A motion to amend “may . . . propose a reasonable number of
substitute claims. . . . The presumption is that only one substitute claim
would be needed to replace each challenged claim, . . . .” 37 C.F.R.
§ 42.221(a)(3). Cf. Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R.
§ 42.121(a) (3)) (“There is a rebuttable presumption that a reasonable
number of substitute claims per challenged claim is one (1) substitute
claim.”).
The Petition challenges all 12 claims in the ’709 patent and the
Revised Motion to Amend proposes one substitute claim for each of
challenged claims 1–7. RMTA 1–3. We determine that the number of
proposed claims is reasonable.
3. Respond to Ground of Unpatentability
We next consider whether the proposed substitute claims respond to a
ground of unpatentability involved in this trial. Cf. Lectrosonics, Paper 15 at
5–6.
With respect to the prior art in Ground I, Patent Owner states that
Bid Package TG08.7 Addendum No. 4 (Ex. 1008) represents a
bid submitted by Safti First is described that shows a prior art support
for a glass floor and does not include the adjustment mechanism
described in the original claims and the proposed substitute claims of
the ’709 patent. It should further be seen that the proposed substitute
claims include additional elements, namely a glass floor unit having an
outer walking surface, a movable sheet, an adjuster positioned within a
cavity of the glass floor unit, and a removable hat channel permitting
access to the adjuster from the walking surface of the glass floor unit.
RMTA 6.
With respect to the prior art in Grounds I and II, Patent Owner states
that
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the proposed substitute claims teach a structure not shown or obvious
from the '475 patent, DE230, and/or DE759. The ’475 patent does not
include the adjustment mechanism of the proposed substitute claims
that calls for new elements in the form of an adjuster within a cavity
that moves a sheet within the cavity, where the sheet contacts the glass
floor unit. Also, the sheet may be rotatably positioned in the cavity. In
addition, the new element of a hat channel is called for and is used to
permit access to the adjuster from the outer walking surface of the glass
floor unit.
Further, neither DE230 nor DE759 show the new elements of the
proposed substitute claims. DE230 and DE759 provide for jack that
supports a floor above. There is no structure shown in DE230 and
DE759 for gaining access to the jack once the above floor is in place.
In other words, DE230 and DE759 lack the new elements shown in the
proposed substitute claims.
Id. at 9–10
In light of the above statements, we determine that the amended
language in the proposed substitute claims is responsive to the grounds of
unpatentability involved in this trial.
4. Scope of Amended Claims
A motion to amend may be denied where “[t]he amendment seeks to
enlarge the scope of the claims of the patent or introduce new subject
matter.” 37 C.F.R. § 41.221(a)(2)(ii); cf. Lectrosonics, Paper 15 at 6–7.
We determine that the limitations added via proposed substitute claim
13 do not enlarge the scope of the original claim.
5. New Matter/Written Description
A motion to amend claims must set forth “[t]he support in the original
disclosure of the patent for each claim that is added or amended.” 37 C.F.R.
§ 41.221(b)(1); cf. Lectrosonics, Paper 15 at 7 (“the Board requires that a
motion to amend set forth written description support in the originally filed
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disclosure of the subject patent for each proposed substitute claim, and also
set forth support in an earlier filed disclosure for each claim for which
benefit of the filing date of the earlier filed disclosure is sought” (citing 37
C.F.R. § 42.121(b) (1)–(2)). For this requirement, Patent Owner must cite
“to the original disclosure of the application, as filed, rather than to the
patent as issued.” Id. at 8.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to a person of ordinary skill in the art that the inventor
had possession of the claimed subject matter at the time of filing, rather than
the presence or absence of literal support in the specification for the claim
language. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Patent Owner states:
Support for the language of the original claims and the proposed
substitute claims 13–19 can be found in FIGS. 2–5 of the drawings of
patent 9,926,709 (the ’709 patent) and in Column 1, lines 13–66,
Column 2, lines 1–66, Column 3, lines 1–66, and Column 4, lines 1–16
of the original specification.
Specifically, the added element to proposed substitute
independent claim 13 and dependent claims 14–19, of a "cavity" is
denoted by reference character 62 of FIG. 3, and described in Column
3 lines, 12–13, and Column 3, lines 64–66 of the original specification
of the ’709 patent. The “cavity” of FIG. 5 is shown by reference
character 92 and is described in Column 3, lines 64–66 of the original
specification of the ’709 patent.
Specifically, the added element to proposed substitute
independent claim 13 and dependent claims 14–19 of a “sheet” is
identified by reference character 58 in FIG. 3 and described in Column
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3, lines 8–12, Column 3, lines 62–64, and Column 4, lines 4–5 of the
original specification of the ’709 patent.
The added element of a “hat channel” to proposed substitute
independent claim 13 and dependent claims 14–19 is denoted by
reference character 74 in FIGS. 2 and 3 and in Column 3, lines 41–44
of the original specification of the ’709 patent.
RMTA 4–5.
By said statements, Patent Owner sets forth the support in the original
disclosure of the patent for each limitation added via proposed claim 13.
The statements are not disputed.
For these reasons, and considering the entirety of the record, we find
by a preponderance of the evidence that Patent Owner’s proposed substitute
claim 13 finds adequate support in the original disclosure of the patent.
D. Patentability Over the Prior Art of Record
Having addressed the statutory and regulatory requirements, we
consider whether Petitioner has shown that the proposed amended claims are
unpatentable over the prior art of record in this proceeding.
In addition to the asserted references (see section I.D.), Petitioner also
relies on the Supplemental Declaration of Tim Macfarlane (Ex. 1022) as
support for the various contentions.
We limit the analysis in this section to the newly-added limitations.
As to all other limitations, they were addressed in sections II.E–G.; the
analysis and conclusions as to those limitations are incorporated herein.
Having considered the record as a whole, we discern little or no
distinction between the substitute claims and the prior art of record.
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1. Anticipation by Webcor/Obayashi Joint Venture
(a) Substitute Independent Claim 13
As with Ground I (see section II.E.), we focus on “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008) which describes a GPX FireFloor
System called “120 Minute Fire Resistive Floor System” of the
Webcor/Obayashi Joint Venture (“WOJV”). It describes Safti First’s “120
Minute Fire Resistive Floor System” which, based on our review of the
evidence of record, we are persuaded was the subject of a commercial offer
for sale. See section II.E.1.(b). We incorporate herein our earlier analysis of
Ground I wherein we determined that that the systems described in “120
Minute Fire Resistive Floor System” (Ex. 1009) and “Transbay Shop
Drawings” (Ex. 1020) are the same as the system described in “Bid Package
TG08.7 Addendum No. 4” (Ex. 1008).
Petitioner contends that Transbay Shop Drawings (Ex. 1020) “show
each and every feature of revised substitute claim 13.” RMTA Opp. 3. In
support thereof, Petitioner provides an annotated version of a drawing
disclosed on page 5 of “Transbay Shop Drawings” (Ex. 1020) and compares
it to Figure 3 of the ʼ709 patent.
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The preceding image is a comparison of an annotated version of a drawing
disclosed on page 5 of “Transbay Shop Drawings” (Ex. 1020) and Figure 3
of the ʼ709 patent. Id. at 4.
As Mr. Macfarlane explains,
More specifically, with respect to substitute claim 13, the Transbay
Shop drawings (Ex. 1020) include a glass floor unit and a base (the fire
resistive structural frame). . . . The Transbay Shop drawings
(Ex. 1020) also include a tempered laminated walking surface that is
the same as described in the ’709 Patent at Col. 2, ll. 47–50. The
Transbay Shop drawings (Ex. 1020) also disclose that the glass floor
unity includes a cavity. The support in the Transbay Shop drawings
(Ex. 1020) is depicted as being wider than it is thick, i.e., in the form of
a plate.
. . . .
Included . . . are a support that contacts the glass floor, a receiver
configured for extension and fixed to the base, along with an adjuster,
and a hat channel removably positioned over the adjuster. The support
is a sheet that is rotatable within said cavity of the glass floor unit. The
adjuster is positioned in the cavity and rotates relative to the receiver.
The hat channel is positioned over the adjuster and can be removed to
permit access to the adjuster in the cavity. . . .
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. . . .
[R]otational movement of the adjuster in Transbay Shop drawings
(Ex. 1020) will cause movement of the support that is attached thereto,
thereby moving the glass floor unit relative to the base.
Ex. 1022 ¶¶ 30–32; RMTA Opp. 4.
From this evidence, we determine Petitioner has shown that
“Transbay Shop Drawings” (Ex. 1020) describes the newly-added
limitations “having an outer walking surface, said glass floor unit having a
cavity,” “said adjuster positioned in said cavity,” “said support comprising a
sheet, said sheet being rotatable relative to said adjuster for movement
within said cavity of said glass floor unit,” and “a hat channel, said hat
channel removably positioned over said adjuster for permitting access to
said adjuster in said cavity from said outer walking surface.”
Patent Owner repeats arguments presented in opposing the challenge
to the patentability of claim 1. RMTA Reply 1–4 and 6–7. We incorporate
herein our reasons for finding said arguments unpersuasive as in regards to
Petitioner’s challenge. See Section E.
Patent Owner also contends, based on the drawing on page 2 of
“Transbay Shop Drawings” (Ex. 1020) (included in the passage from RMTA
Reply 5 reproduced below), that “Transbay Shop Drawings” (Ex. 1020) does
not describe the “support” as claimed in proposed substitute claim 13.
With further reference to the drawing on page 4 above, the plate or tab,
misidentified by Petitioner as a "support”, lies in between an upper
glass layer (unnumbered), and a lower glass layer (unnumbered). This
plate or tab is shown as being imbedded in a non-metallic material
(unnumbered) and free of contact from any of the glass of the glass unit
(unnumbered). In fact, drawing OKI-00279 of Ex. 1020 indicates that
such plate or tab is welded to a fixed spacer and, thus, cannot rotate
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relative to an adjuster bold or move up or down once it is positioned.
Drawing OKI-00279 is reproduced below in part.

Drawing from page 5 of “Transbay Shop Drawings” (Ex. 1020).
RMTA Reply 5.
Patent Owner’s argument — that the support shown in “Transbay
Shop Drawings” (Ex. 1020) does not rotate relative to an adjuster —
contradicts Petitioner. However, Petitioner’s position is supported with
expert testimony (see Ex. 1022 ¶ 31 (“[t]he support is a sheet that is
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rotatable within said cavity of the glass floor Unit”)), which we find to be
persuasive and consistent with the disclosure of Exhibit 1020.
Also, Petitioner relies on page 5 of “Transbay Shop Drawings”
(Ex. 1020), not page 2, as teaching the claimed “support.” In that regard,
Patent Owner does not adequately explain how the drawing on page 2 relates
to and affects the structure shown on page 5, and thus we agree with
Petitioner that Patent Owner’s arguments do not undermine Petitioner’s
showing with respect to page 5 of that reference. See RMTA Sur-Reply 7–
8:
PO asserts the plate is a “tab” which is welded to a fixed spacer as
illustrated in “Drawing OKI-00279.” Upon closer inspection of OKI-
002779 (Ex. 1020, Page 2 of 6), it is unknown the location that the Top
View 2/3 is taken on the remaining drawings. The remaining drawings
fail to show a corresponding Top view 2/3. For example, as illustrated
on Page 1 of 6 of Ex. 1020, a pair of Top view directional arrows 2/2 is
illustrated on the left of the drawing and a corresponding Top View 2/2
is illustrated on the right of the drawing, reproduced below. (Ex. 1020,
Page 1 of 6)

Petitioner asserts there are no corresponding directional arrows
2/3 in the Transbay Shop drawings therefore it is unknown what
location in the drawings the tab” shown in the Top View 2/3
corresponds to. Since the Transbay Shop Drawings were within PO’s
possession, additional drawings to the extent they could exist, could
have been submitted to show the location of the Top View 2/3, but PO
failed to do so.
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Id.
Weighing Petitioner’s position, which is supported by credible expert
testimony, on the one hand and Patent Owner’s position, which, inter alia,
inadequately explains the relevance of page 2 of “Transbay Shop Drawings”
(Ex. 1020), on the other hand, we find that the evidence of record weighs in
favor of the conclusion that “Transbay Shop Drawings” (Ex. 1020) describes
the limitation reciting “said support comprising a sheet, said sheet being
rotatable relative to said adjuster for movement within said cavity of said
glass floor unit” (as recited in substitute claim 13).
Based on our review of the evidence of record, we are persuaded
Petitioner demonstrates that the system described in “Transbay Shop
Drawings” (Ex. 1020) describes the newly-added limitations set forth in
substitute claim 13.
(b) Conclusion
Accordingly, given our prior determination that that the system
described in “Transbay Shop Drawings” (Ex. 1020) is the same as the
system described in “Bid Package TG08.7 Addendum No. 4” (Ex. 1008), we
are persuaded Petitioner demonstrates by a preponderance of the evidence
that substitute claim 13 is anticipated by the offer for sale to the
Webcor/Obayashi Joint Venture of the “120 Minute Fire Resistive Floor
System” described in the “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008).
(c) Substitute Dependent Claims 14–19
Neither Petitioner nor Patent Owner specifically address substitute
dependent claims 14–19.
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However, substitute dependent claims 14–19 correspond directly to
original dependent claims 2–7.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 2–7,
we are persuaded Petitioner demonstrates by a preponderance of the
evidence that substitute claims 14–19 are anticipated by the offer for sale to
the Webcor/Obayashi Joint Venture of the “120 Minute Fire Resistive Floor
System” described in the “Bid Package TG08.7 Addendum No. 4”
(Ex. 1008).
2. Obviousness over Rae and DE759
(a) Substitute Independent Claim 13
(1) “having an outer walking surface, said glass
floor unit having a cavity”
Substitute claim 13 further limits “a glass floor unit” (claim 1) such
that it “ha[s] an outer walking surface, said glass floor unit having a cavity”
(RMTA 1).
Petitioner contends that “[r]evised substitute claim 13 includes ‘a
glass floor unit having an outer walking surface, said glass floor unit having
a cavity,’ a feature which was included in original claim 8 and therefore
remains unpatentable for the same reason that claim 8 was obvious over Rae
in view of DE759.” RMTA Opp. 6.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Petitioner adds that “A POSA would understand that Rae teaches a
two-component, one-piece glass floor unit having a cavity between the first
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and second layers of glass. (Ex. 1014 at 3:18–21, 7:23–61, Fig. 6; Ex. 1022
at ¶¶ 53–63; Paper 34 at 7).” Id.
Petitioner further adds that “DE759 teaches a protection layer or
coating placed on top of the upper layer of a floor panel for walking upon
and a lower layer of fire protection panels with a space or cavity between the
upper and lower layers. (Ex. 1015 at 15; Ex. 1022 at ¶¶ 53–63).” Id.
Petitioner’s characterization of Rae and DE759 is consistent with their
disclosures. As is plainly evident from Rae Fig. 3 and DE759 Figs. 3 and 4,
reproduced above, Rae and DE759 disclose floor units on which one can
walk having two components (lower and upper layers) with a cavity there-
between.
Based on our review of the evidence of record, Petitioner has shown
that Rae discloses “a glass floor unit” (claim 1) such that it “ha[s] an outer
walking surface, said glass floor unit having a cavity” (substitute claim 13)
as claimed. Petitioner has shown that DE759 discloses a floor unit (claim 1)
having “an outer walking surface” and “a cavity” (substitute claim 13) as
proposed.
(2) “said adjuster positioned in said cavity”
Substitute claim 13 further limits “an adjuster, said adjuster
configured to interact with said receiver and to produce relative movement
between said receiver and said adjuster” (claim 1) such that “said adjuster
[is] positioned in said cavity” (RMTA 1).
As with claim 1, Petitioner concedes that Rae does not disclose an
adjuster as claimed. See discussion in section II.F.1.(e). However,
Petitioner relies on DE759 for this element. Id. In that regard, we
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determined that based on our review of the evidence of record, Petitioner
showed DE759 discloses “an adjuster” as set forth in claim 1. Id.
Here, substitute claim 13 further limits the adjuster of claim 1 such
that “said adjuster [is] positioned in said cavity” (RMTA 1) of said “glass
floor unit.”
Petitioner contends that “DE759 discloses a height-adjustable screw
18 that is positioned in the cavity between the upper layer of the floor panels
and the lower layer of fire protection panels. (Ex. 1015 at 3–4, FIGS. 3/10,
4/10, 9/10; Ex. 1022 at ¶¶ 87–93).” RMTA Opp. 7.
Petitioner’s characterization of DE759 is consistent with its
disclosure. As is plainly evident from DE759 Figs. 3 and 4, reproduced
above, DE759 discloses a floor unit having two components (lower and
upper layers) with a cavity there–between and the adjuster positioned within
said cavity.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Based on our review of the evidence of record, Petitioner has shown
that DE759 discloses “an adjuster, said adjuster configured to interact with
said receiver and to produce relative movement between said receiver and
said adjuster” (claim 1) such that “said adjuster [is] positioned in said
cavity” (substitute claim 13) as proposed.
(3) “said support comprising a sheet, said sheet
being rotatable relative to said adjuster for
movement within said cavity of said glass floor
unit”
Substitute claim 13 further limits “a support, said support positioned
to contact the glass floor unit” (claim 1) such that “said support compris[es]
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a sheet, said sheet being rotatable relative to said adjuster for movement
within said cavity of said glass floor unit.” RMTA 2.
Petitioner contends that “this feature was included in original claim 8
and therefore remain[s] unpatentable for the reasons that claim 8 was
obvious over Rae in view of DE759. (Petition at 23–24, 35–36).” RMTA
Opp. 7.
Petitioner is correct that claim 8 identically includes the proposed
limitation “said support compris[es] a sheet, said sheet being rotatable
relative to said adjuster for movement within said cavity of said glass floor
unit” (RMTA 2).
Patent Owner argues the following:
Contrary to Mr. Macfarlane's opinion (Ex. 1022), given without
support, screw 18, disclosed in DE759, is only identified as having a
support plate being the screw head (Ex. 1015, page 4, lines 3–4, claim
14). In other words, the support plate 22, 322 of DE 230 is a unitary
element of screw 18 and does not rotate independently of screw 18.
Consequently, support plates 22, 322 (Ex. 1016, column 5, claim 17)
that rotate independently of the screw 18 cannot be read into the
disclosure of DE759[.] In other words, this structure is not found in the
content of DE759, taken as a prior art reference.
RMTA Reply 9.
Patent Owner is referring to Mr. Macfarlane’s Supplemental
Declaration which states:
DE759 discloses that “[t]he screw in turn holds a support plate 22 on
its upper side, on which the actual base layer [of the upper flooring]
rests.” Ex. 1015 at 14. Because support plate 22 is “[held] on [the]
upper side” of the screw head, support plate 22 will necessarily either
rotate with the screw (if immovably held, e.g. welded) or rotate
independently of the screw (if movably held, e.g. threaded).
Ex. 1022 ¶ 73.
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Petitioner responds that
PO’s attempt to characterize DE759 as disclosing “the support
plate 22, 322 of DE 230 is a unitary element of screw 18 and does not
rotate” (Paper #43 at 9, 10) is attorney argument, and is contradicted by
the testimony of Petitioner’s expert. DE759 discloses that “the screw
in turn holds a support plate 22 on its upper side, on which the actual
base layer of [the upper flooring] rests.” (Ex. 1015 at 14, Figs. 3, 4)
Mr. Macfarlane notes DE759 further discloses the supports 22, 322
(sheets) are rotatable for elevating a floor panel. DE759 teaches that
support plates 22, 322 will necessarily either rotate with the screw 18
or rotate independently of the screw, and therefore DE759 teaches
rotational movement of the support plates 22, 322. Given that these are
the only two possible choices for support plates 22, 322, each would
have been at least obvious to a POSA. (Ex. 1022 at ¶¶ 64–76).
RMTA Sur-Reply 10.
The parties take contradictory positions on the plate’s movability.
Patent Owner takes the view that the plate is immovably held. Based on
DE759’s disclosure of “the screw head of which is configured to form a
support plate for the floor panels” (Ex. 1015, 4), the screw head and the
support plate are one and the same according to Patent Owner. From
Petitioner’s point of view, DE759’s disclosure of “the screw in turn holds a
support plate 22 on its upper side, on which the actual base layer of rests”
(Ex. 1015, 14 (emphasis added)), implies that the support is movably held
with respect to the screw.
Petitioner presents expert testimony in support of its view; that is,
according to Mr. Macfarlane, “[b]ecause support plate 22 is ‘[held] on [the]
upper side’ of the screw head, support plate 22 will necessarily either rotate
with the screw (if immovably held, e.g. welded) or rotate independently of
the screw (if movably held, e.g. threaded).” Ex. 1022 ¶ 73.
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Earlier with respect to claim 8 and based on the same said disclosure,
we indicated that “[g]iven that the support plate is held by a screw, which
rotates, the support plate necessarily rotates with the screw, irrespective of
how the support plate is attached to the screw.” Section II.F.8 (emphasis
added). We reach the same determination here.
We have considered the disclosure in DE759 stating “the screw head
of which is configured to form a support plate for the floor panels”
(Ex. 1015, 4). However, DE759 also discloses that the screw “holds” the
support plate. Id. at 14. Based on that disclosure, as Mr. Macfarlane
explains, “support plate 22 will necessarily either rotate with the screw (if
immovably held, e.g. welded) or rotate independently of the screw (if
movably held, e.g. threaded).” Ex. 1022 ¶ 73.
Based on our review of the evidence of record, Petitioner has shown
that DE759 discloses “a support, said support positioned to contact the glass
floor unit” (claim 1) such that it “compris[es] a sheet, said sheet being
rotatable relative to said adjuster for movement within said cavity of said
glass floor unit” (substitute claim 13) as proposed.
(4) “sheet” substituted for original term “support”
in describing the “connector”
Substitute claim 13 substitutes “sheet” for original term “support” in
describing the “connector,” such that it proposes
a connector, said connector linking said sheet to said adjuster to effect
simultaneous movement of said sheet with the relative movement
between said receiver and said adjuster, said movement of said sheet
exerting a force on said glass floor unit to effect relative movement
between said glass floor unit and said base contacting the foundation.
RMTA 2.
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Petitioner contends that “DE759, however, teaches the connector
element of claim 13. (Ex. 1022 at ¶¶ 94–99) (Paper 34 at 7–8).” RMTA
Opp. 8–9.
As Mr. Macfarlane explains,
DE759 further discloses that “[t]he screw in turn holds a support plate
22 on its upper side, on which the actual base layer rests.” Ex. 1015 at
14.
According to one particular embodiment, “upper part . . .
comprises a thread, on which a nut is provided in a height–adjustable
manner, and a support or head plate, on which the floor layer rests.”
Ex. 1015 at 17. DE759’s nut therefore corresponds to the claimed
connector . . . because it causes movement of the support plate resting
on top of it (and the glass panel(s) resting on those) when the adjuster
(the height–adjustable screw) is moved relative to the receiver (the
support tube having an internal thread). Alternatively, DE759’s nut and
upper part of the height–adjustable screw correspond to the claimed
connector (when this element is interpreted to be a nut and bolt
together) because they cause movement of the support plate resting on
top (and the glass panel(s) resting on those).
Ex. 1022 ¶¶ 96–97.
Patent Owner does not contest that DE759 teaches the connector
linking a sheet if it discloses a support comprising a sheet. In that regard, as
we have already determined, based on our review of the evidence of record,
Petitioner has shown that DE759 discloses “a support, said support
positioned to contact the glass floor unit” (claim 1) such that it “compris[es]
a sheet, said sheet being rotatable relative to said adjuster for movement
within said cavity of said glass floor unit” (substitute claim 13) as proposed.
See Section III.D.2.(a)(4).

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Based on our review of the evidence of record, including Mr.
Macfarlane’s testimony, Petitioner has shown that DE759 discloses “a
connector, said connector linking said sheet to said adjuster to effect
simultaneous movement of said sheet with relative movement between said
receiver and said adjuster, said movement of said sheet exerting a force on
said glass floor unit to effect relative movement between said glass floor unit
and said base contacting the foundation” (substitute claim 13) as proposed.
(5) “a hat channel, said hat channel removably
positioned over said adjuster for permitting access
to said adjuster in said cavity from said outer
walking surface”
Substitute claim 13 adds “a hat channel, said hat channel removably
positioned over said adjuster for permitting access to said adjuster in said
cavity from said outer walking surface.” RMTA 2.
Petitioner contends that
DE759 teaches a transverse profile 328 that is positioned over support
plate 322 and adjustable screw mechanism 18 such that removal of the
transverse profile 328 would permit access to the cavity and the height-
adjustable screw mechanism 18 from the outer or top walking surface
of the floor panel. . . .
A POSA would understand that DE759’s fasteners can be
removed from the transverse profile 328 and the flanges of support
plates 322 so that the transverse profile 328 can be removed to access
DE759’s height-adjustable screw 18. (Ex. 1015 at 15–16, FIG. 4/10;
Ex. 1022 at ¶¶ 100–106)
RMTA Opp. 9–10.
Petitioner’s characterization of DE759 as disclosing a “hat channel”
as proposed, that is, “removably positioned over said adjuster for permitting
access to said adjuster in said cavity from said outer walking surface,” is
consistent with DE759 Figs. 3 and 4, reproduced above. Exhibit 1015, Fig.
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4 shows element 328 in a channel extending from the support plate
322/height-adjustable screw mechanism 18 to the walking surface of the top
floor panel.
As Mr. Macfarlane explains,
[i]llustrated in FIG. 4, the transverse profiles 326, 328 are attached to
flanges of support plates 322 with fasteners such as screws, bolts, or
another similar type mechanism. Ex. 1015 at 4, Fig. 4/10. A person of
ordinary skill in the art would understand that the transverse profiles
326, 328 are similar to the hat channel 74 of the ’709 patent.
A person of ordinary skill in the relevant art would necessarily
understand that DE759’s screw or bolt can be removed from the
transverse profile 328 so that the transverse profile 328 can be removed
to access DE759’s height–adjustable screw 18 in the cavity between
floor panel 5 and fire protection panel 206. The transverse profile 328
is positioned over the height–adjustable screw mechanism 18 that is in
contact with the underside of the upper layer of floor panels. A person
of ordinary skill in the relevant art would also necessarily understand
that removal of DE759’s transverse profile 328 would permit access to
the cavity and the height-adjustable screw mechanism 18 from the outer
or top walking surface of the floor panel. Ex. 1015 at 15–16, FIG. 4/10.
Ex. 1022 ¶¶ 104–105.
Patent Owner disagrees that DE759 discloses a “hat channel” as
proposed. According to Patent Owner, in DE759, “[a]fter installment of
floor panels 5 and 6, screw 18 is inaccessible.” RMTA Reply 9.
Petitioner points to the DE759 reference as showing a transverse profile
328 that is positioned over support plate 322 and adjustable screw
mechanism 18. It is believed petitioner is referring to FIG. 4 of DE759.
However, profile 328 cannot be removed without disassembling the
entire floor structure of DE759. In other words, to gain access to
support plate 322, floor 5 must be removed and the flanges of support
plate 322 must be disconnected from transverse profile 326 and a
second profile (unnumbered) appearing to the left of transvers profile
326. Transverse profile 326 must then be removed as well as the
complimentary profile (unnumbered) to the left of transverse profile
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326. Finally, profile 328 must be removed from support plate 322 by
excising what appears to be a rivet. Profile 328 would then be placed
on the screw mechanism 18 of DE759 in the Rae glass system. Such
an effort is well beyond the skill of a POSA and would still lack the
rotatable sheet of Patent Owner’s amended claims 13–19.
Id. at 10–11.
Petitioner responds, inter alia, that
Contrary to PO’s assertion (Paper #43 at 10), there is no requirement in
claim 13 regarding disassembly of “the entire floor,” instead only a hat
channel that is removably positioned over the adjuster. DE759 teaches
a transverse profile 328 that is positioned over support plate 322 and
adjustable screw mechanism 18 such that removal of the transverse
profile 328 would permit access to the cavity and the height-adjustable
screw mechanism 18 from the outer or top walking surface of the floor
panel.
RMTA Sur-Reply 11.
We agree with Petitioner. Patent Owner argues against equating
DE759’s transverse profile 328 with the “hat channel” on the ground that
“profile 328 cannot be removed without disassembling the entire floor
structure of DE759.” RMTA Reply 9. But proposed claim 13 does not
preclude disassembly of “the entire floor” in order to gain access to the
screw. The argument is not commensurate in scope with what is claimed
and therefore we remain persuaded by Petitioner’s position.
Based on our review of the evidence of record, Petitioner has shown
that DE759 discloses “a hat channel, said hat channel removably positioned
over said adjuster for permitting access to said adjuster in said cavity from
said outer walking surface” (substitute claim 13) as proposed.
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(6) The motivation to combine Rae and DE759
with a reasonable expectation of success
We stated with respect to claim 1, that based on our review of the
evidence of record, Petitioner has shown that Rae discloses the “glass floor
unit,” “base,” “support,” and “receiver” as claimed and that DE759 discloses
the “adjuster” and “connector” as claimed. See section II.F.1.(g).
Here, with respect to (1) “having an outer walking surface, said glass
floor unit having a cavity;” (2) “said adjuster positioned in said cavity;”
(3) “said support comprising a sheet, said sheet being rotatable relative to
said adjuster for movement within said cavity of said glass floor unit;”
(4) the connector; and (5) “a hat channel, said hat channel removably
positioned over said adjuster for permitting access to said adjuster in said
cavity from said outer walking surface;” based on our review of the evidence
of record, Petitioner has shown these are disclosed in Rae and DE759.
Patent Owner argues in its Revised Motion to Amend that
the proposed substitute claims teach a structure not shown or obvious
from the ’475 patent [i.e., Rae], DE230, and/or DE759.
The ’475 patent does not include the adjustment mechanism of
the proposed substitute claims that calls for new elements in the form
of an adjuster within a cavity that moves a sheet within the cavity,
where the sheet contacts the glass floor unit. Also, the sheet may be
rotatably positioned in the cavity. In addition, the new element of a hat
channel is called for and is used to permit access to the adjuster from
the outer walking surface of the glass floor unit.
Further, neither DE230 nor DE759 show the new elements of the
proposed substitute claims. DE230 and DE759 provide for jack that
supports a floor above. There is no structure shown in DE230 and
DE759 for gaining access to the jack once the above floor is in place.
In other words, DE230 and DE759 lack the new elements shown in the
proposed substitute claims.
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RMTA 9–10.
However, it is DE759 that discloses the adjustment mechanism of the
proposed substitute claims (as well as the adjustment mechanism of claim
1), not Rae.
Patent Owner’s arguments regarding the support sheet and hat channel
and that DE759 provides for a “jack” are devoid of any detail indicative of a
difference between the support sheet and hat channel and what DE759
discloses. In light of the evidence on record showing that DE759 discloses
the support sheet and hat channel as proposed, we remain persuaded by
Petitioner’s position.
Patent Owner further argues that
[c]ombining the teachings of the Rae ’475 patent with that of
DE759 would entail substituting the prefixed glazing bars 30 and steel
strip 24 of RAE for the screw adjustment found in the DE759 patent.
Such a step would separate the fire-rated glass layers 26 and 27 by
removal of ceramic fiber tape 28b by raising structural glass layers 32
and 33, thus greatly upsetting the fire suppressing quality of the Rae
’475 system. For example, replacement of ceramic fiber tape 28b to lie
against the DE775 screw would hinder movement of plate 22, 322.
Most importantly, the rotatable sheet rotating relative to the
adjuster of Patent Owner's amended claims 13–19 would be absent,
eliminating a necessary element of amended claims 13–19.
RMTA Reply 10.
A difficulty with Patent Owner’s argument is that it is based on
reading the claim limitation “glass floor unit” as a single unit. As we stated
in addressing a similar argument by Patent Owner with respect to said
limitation in claim 1,
[t]here is no requirement, for example, that the two components be
unmovable with respect to each other or that any force exerted on one
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component should necessarily be exerted on the other. The argument
is not commensurate in scope with what is claimed.
Section II.F.1.(a). As above, the argument is not commensurate in scope
with what is claimed.
Moreover, as Mr. Macfarlane explains:
A person of ordinary skill in the art would understand that the height–
adjustable screw mechanism of DE 759 used with the one–piece glass
floor unit in Rae (Ex. 1014, at 7:23–61; Fig. 6) would adjust the glass
floor unit that includes the fire rated glass attached to the structural
glass.
Ex. 1022 ¶ 70.
Accordingly, as Petitioner contends, DE759’s “height–adjustable
screw mechanism of DE759 used with the one–piece glass floor unit in Rae
(Ex. 1014 at 7:23–61; Fig. 6) would adjust the elevation of the glass floor
unit and would not affect the fire rating nor dislodge any filling material as
this material is easily adjusted by a POSA at the same time as adjusting the
elevation of the glass floor unit.” RMTA Sur-Reply 10–11.
Substituting DE759’s support tube (14, see DE759’s Fig. 3), including
DE759’s height-adjustable threaded mechanism (locknut included) seated
therein, for Rae’s steel strip (24, see Rae Fig. 3) does no more than yield a
fire rated glass flooring system with an adjuster configured to interact with a
receiver (i.e., DE759’s support plate 22) “to produce relative movement
between said receiver [i.e., DE759’s support tube] and said [threaded]
adjuster” (claim 1), thereby reaching the claimed mechanism for forming a
floor structure resting on a foundation. In Petitioner’s combination, the
resulting mechanism would have included DE759’s rotatable sheet rotating
relative to the adjuster, not eliminate it as Patent Owner argues.
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Because Rae and DE759 disclose the limitations (1) “having an outer
walking surface, said glass floor unit having a cavity;” (2) “said adjuster
positioned in said cavity;” (3) “said support comprising a sheet, said sheet
being rotatable relative to said adjuster for movement within said cavity of
said glass floor unit;” (4) the connector; and (5) “a hat channel, said hat
channel removably positioned over said adjuster for permitting access to
said adjuster in said cavity from said outer walking surface,” that are
proposed to be added to claim 1, substituting DE759’s support tube for
Rae’s steel strip in reaching the mechanism for forming a floor structure
resting on a foundation set forth in claim 1 necessarily includes said
limitations. “[W]hen a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
KSR Int’l Co., 550 U.S. at 416. “When a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” Id.
(7) Secondary Considerations
Patent Owner’s Reply to Petitioner’s Opposition to the RMTA (Paper
35) includes a section entitled “V. FURTHER COMMENTS AS TO
ALLOWABILITY OF PROPOSED SUBSTITUTE CLAIMS 13–19 OVER
THE PRIOR ART CITED BY PETITIONER.” RMTA Reply 13. In this
section, “Patent Owner points out the advantages of the mechanism found in
revised claims 13–19 of the ’709 patent.” Id.
Most notably, in the ’709 patent, FIGS. 3 and 4, as well as the
specification column 3, lines 15–67 and column 4, lines 1–10, describe
the support 58 in the form of a sheet that is rotatable relative to the
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adjuster 66, which permits the mechanism of the ’709 patent to be
installed and adjusted after the placement of floor structure 12 on base
32 (emphasis added). Any of the combination of references cited by
Petitioner results in a structure that is only installed and adjustable prior
to floor installation.
FIG. 4 depicts such rotational movement of support 58. In this
Figure, the adjustment mechanism 10 is positioned as shown in FIG. 3
in cavity 62 and support 58 is rotated into position, relative to bolt 66
of adjuster 64. Such rotation permits contact of support 58 with glass
portions 20 and 22, to allow up or down movement of floor structure
12.
As stated heretofore, none of the prior art considered in the
present proceeding recognizes the need to effect the lifting or lowering
of a floor after installation of the same. Moreover, none of the prior art
references taken alone or in combination show a rotatable support that
moves relative to an adjuster to achieve this result.
Id. at 13–14.
The difficulty with this argument is that it is not commensurate in
scope with what is claimed. The claims do not reflect the Patent Owner’s
asserted difference between “permit[ting] the mechanism of the ’709 patent
to be installed and adjusted after the placement of floor structure 12 on base
32” (id.) and “a structure that is only installed and adjustable prior to floor
installation” (id.). The claims are directed to an apparatus (i.e., “[a]
mechanism”), not a method of installing a floor structure using said
apparatus. We agree with Petitioner that “PO argues that none of the
references recognize lifting or lowering of a floor after installation (Paper
#43 at 14); however, Petitioner asserts this limitation is not found in the
revised claims.” RMTA Sur-Reply 14.
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(8) Conclusion
Based on our review of the evidence of record, we are persuaded
Petitioner demonstrates by a preponderance of the evidence that substitute
claim 13 would have been unpatentable as obvious over the combined
teachings of Rae and DE759.
(b) Substitute Dependent Claims 14–19
Petitioner states that “[r]evised substitute dependent claims 14–19
correspond directly to original dependent claims 2–7.” RMTA Opp. 10.
Patent Owner does not disagree.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 2–7,
we are persuaded Petitioner demonstrates by a preponderance of the
evidence that substitute claims 14–19 would have been unpatentable as
obvious over the combined teachings of Rae and DE759. See Sections
II.F.2.–12.
3. Obviousness over DE230 and Rae
(a) Substitute Independent Claim 13
(1) “having an outer walking surface, said glass
floor unit having a cavity”
Substitute claim 13 further limits “a glass floor unit” (claim 1) such
that it “ha[s] an outer walking surface, said glass floor unit having a cavity”
(RMTA 1).
Petitioner contends that “[r]evised substitute claim 13 includes ‘a
glass floor unit having an outer walking surface, said glass floor unit having
a cavity,’ a feature which was included in original claim 8 and therefore
remains unpatentable for the same reason that claim 8 was obvious over
DE230 in view of Rae.” RMTA Opp. 12.
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Patent Owner does not disagree.
Petitioner adds that “DE230 discloses a gap or cavity between the
upper and lower layers, and a screed coating on the top of the upper layer of
the floor panel (Ex. 1016 at 21, FIGS. 3/21, 4/21, 7/21, 9/21; Ex. 1022 at
¶¶ 306–314).” Id.
Petitioner further adds that “Rae teaches a two-component, one-piece
glass floor unit having a cavity between the first and second layers of glass.
(Ex. 1014 at 3:18–21, 7:23–61, Fig. 6; Ex. 1022 at ¶¶ 306–314; Paper 34 at
7).” Id.
Petitioner’s characterization of DE230 and Rae is consistent with their
disclosures. As is plainly evident from DE230 Figs. 3 and 4 and Rae Fig. 3,
reproduced above, DE230 and Rae disclose floor units on which one can
walk having two components (lower and upper layers) with a cavity there-
between.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses a floor unit (claim 1) having “an outer walking
surface” and “a cavity” (substitute claim 13) as proposed. Petitioner has also
shown that Rae discloses “a glass floor unit” (claim 1) such that it “ha[s] an
outer walking surface, said glass floor unit having a cavity” (substitute claim
13) as claimed.
(2) “said adjuster positioned in said cavity”
Substitute claim 13 further limits “an adjuster, said adjuster
configured to interact with said receiver and to produce relative movement
between said receiver and said adjuster” (claim 1) such that “said adjuster
[is] positioned in said cavity” (RMTA 1).
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As with claim 1, Petitioner concedes that Rae does not disclose an
adjuster as claimed. See discussion in section II.F.1.(e). However,
Petitioner relies on DE230. RMTA Opp. 13. In that regard, we determined
that based on our review of the evidence of record, Petitioner showed DE230
discloses “an adjuster” as set forth in claim 1. See discussion in section
II.G.1.(e).
Here, substitute claim 13 further limits the adjuster of claim 1 such
that “said adjuster [is] positioned in said cavity” (RMTA 1) of said “glass
floor unit.” RMTA 1.
Petitioner contends that “DE230 teaches the adjuster element of
revised substitute claim 13. DE230’s height-adjustable screw 18 is
positioned in a gap or cavity between the upper and lower layers. (Ex. 1015
at 3–4, FIGS. 3/10, 4/10, 9/10; Ex. 1022 at ¶¶ 336–341) DE230 teaches the
claim limitation of “an adjuster” of revised substitute claim 13 (Paper 34 at
7).” RMTA Opp. 13.
Petitioner’s characterization of DE230 is consistent with its
disclosure. As is plainly evident from DE230 Figs. 3 and 4, reproduced
above, DE230 discloses a floor unit having two components (lower and
upper layers) with a cavity there-between and the adjuster positioned within
said cavity.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “an adjuster, said adjuster configured to interact with
said receiver and to produce relative movement between said receiver and
said adjuster” (claim 1) such that it “said adjuster [is] positioned in said
cavity” (substitute claim 13) as proposed.
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(3) “said support comprising a sheet, said sheet
being rotatable relative to said adjuster for
movement within said cavity of said glass floor
unit”
Substitute claim 13 further limits “a support, said support positioned
to contact the glass floor unit” (claim 1) such that “said support compris[es]
a sheet, said sheet being rotatable relative to said adjuster for movement
within said cavity of said glass floor unit.” RMTA 2.
Petitioner contends that “this feature was included in original claim 8
and therefore remain[s] unpatentable for the reasons that claim 8 was
obvious over Rae in view of DE759. (Petition at 23–24, 35–36).” RMTA
Opp. 7.
Petitioner is correct that claim 8 identically includes the proposed
limitation “said support compris[es] a sheet, said sheet being rotatable
relative to said adjuster for movement within said cavity of said glass floor
unit.” RMTA 2.
Patent Owner argues the following:
Most importantly, as is the case with DE759, DE230 only discloses
support plate 22, 322 as configured to be a screw head of screw 18
(Ex. 1016, claim 17, page 5, lines 7–8). There is no disclosure in
DE230 that shows or suggests the support 22, 322 be rotatable relative
to the adjuster, in this case screw 18, as is defined in Patent Owner’s
revised claims 13–19. Contrary to Mr. Macfarlane’s opinion
(Ex. 1022), given without support, screw 18 is only disclosed as having
a support plate in the form of a screw head (Ex. 1015, page 5, claim 17,
lines 7–8). In other words, the support plate 22, 322 of DE 230 is a
unitary element of screw 18 and does not rotate independently of screw
18. Consequently, support plates 22, 322 (Ex. 1016, column 5, claim
17) that rotate independently of the screw 18 cannot be read into the
disclosure of DE230. In other words, this structure, found in Patent
Owner’s revised claims 13–19, is not shown in the content of DE230,
taken as a prior art reference.
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RMTA Reply 12. Patent Owner did not present such an argument for claim
8. Cf. PO Resp.; PO Sur-reply.
Patent Owner is referring to Mr. Macfarlane’s Supplemental
Declaration which states:
DE230 discloses that “[t]he screw in turn holds a support plate 22 on
its upper side, on which the actual base layer [of the upper flooring]
rests.” Ex. 1016 at 23. Because support plate 22 is “[held] on [the]
upper side” of the screw head, support plate 22 will necessarily either
rotate with the screw (if immovably held, e.g. welded) or rotate
independently of the screw (if movably held, e.g. threaded).
Ex. 1022 ¶ 322.
Petitioner responds that
PO’s attempt to characterize DE230 as disclosing “the support
plate 22, 322 is configured to be a screw head of screw 18 . . . is not
rotatable relative to the adjuster” (Paper #43 at 12) is attorney
argument, and is contradicted by the testimony of Petitioner’s expert.
DE230 discloses “the screw [18] in turn holds a support plate 22 on its
upper side, on which the actual base layer of [the upper floor flooring]
rests.” (Ex. 1016 at 23, Figs. 3, 4, 9) Mr. Macfarlane notes because
support plate 22 is “held on the upper side” of the screw head, support
plate 22 will necessarily either rotate with the screw (if immovably
held) or rotate independently of the screw (if movably held, e.g.
threaded). DE230 teaches supports 22, 322 will necessarily either
rotate with the screw or rotate independently of the screw, and therefore
DE230 teaches rotational movement of the support plates 22, 322 for
elevating a floor panel. (Ex. 1016 at 14; Ex. 1022 at ¶¶ 315–325; Paper
34 at 7).
RMTA Sur-Reply 13–14.
Patent Owner points out that DE230 states “the screw head of which
is configured to form a support plate for the floor panels.” Ex. 1016, 5. This
suggests the screw head and the support plate are one and the same.
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However, Patent Owner does not respond to Petitioner’s position
which relies on the disclosure of “the screw in turn holds a support plate 22
on its upper side, on which the actual base layer of rests.” Id. at 23
(emphasis added).
Petitioner’s view is that said disclosure shows DE230’s screw and
support are separate elements. Mr. Macfarlane’s testimony supports this
view: “Because support plate 22 is “[held] on [the] upper side” of the screw
head, support plate 22 will necessarily either rotate with the screw (if
immovably held, e.g. welded) or rotate independently of the screw (if
movably held, e.g. threaded).” Ex. 1022 ¶ 322.
Earlier with respect to claim 8 and based on the same said disclosure,
we indicated that “[g]iven that the support plate is held by a screw, which
rotates, the support plate necessarily rotates with the screw, irrespective of
how the support plate is attached to the screw.” Section II.G.8 (emphasis
added). We reach the same determination here.
We have considered the disclosure in DE230 stating “the screw head
of which is configured to form a support plate for the floor panels”
(Ex. 1016, 4). However, DE230 also discloses that the screw “holds” the
support plate. Id. at 23. Based on that disclosure, as Mr. Macfarlane
indicates, “support plate 22 will necessarily either rotate with the screw (if
immovably held, e.g. welded) or rotate independently of the screw (if
movably held, e.g. threaded).” Ex. 1022 ¶ 322.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a support, said support positioned to contact the glass
floor unit” (claim 1) such that it “compris[es] a sheet, said sheet being
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rotatable relative to said adjuster for movement within said cavity of said
glass floor unit” (substitute claim 13) as proposed.
(4) “sheet” substituted for original term “support”
in describing the “connector”
Substitute claim 13 substitutes “sheet” for original term “support” in
describing the “connector,” such that it proposes the following:
A connector, said connector linking said sheet to said adjuster to effect
simultaneous movement of said sheet with the relative movement
between said receiver and said adjuster, said movement of said sheet
exerting a force on said glass floor unit to effect relative movement
between said glass floor unit and said base contacting the foundation.
RMTA 2.
Petitioner contends that
DE230 discloses supports 22, 322 comprise a sheet. (Ex. 1016 at 4–5,
23, FIGS. 3/21, 4/21, 9/21; Ex. 1022 at ¶¶ 315–325; 342–348) DE230
therefore discloses the support element of revised substitute claim 13
and original claim 1. (Ex. 1022 at ¶¶ 315–325; 342–348; Paper 34 at
7).
RMTA Opp. 14.
As Mr. Macfarlane explains,
DE230 further discloses that “[t]he screw in turn holds a support plate
22 on its upper side, on which the actual base layer rests.” Ex. 1016 at
23.
According to one particular embodiment, “upper part . . .
comprises a thread, on which a nut is provided in a height–adjustable
manner, and a support or head plate, on which the floor layer rests.”
Ex. 1016 at 30. DE230’s nut therefore corresponds to the claimed
connector . . . because it causes movement of the support plate resting
on top of it (and the glass panel(s) resting on those) when the adjuster
(the height–adjustable screw) is moved relative to the receiver (the
support tube having an internal thread). Alternatively, DE230’s nut and
upper part of the height–adjustable screw correspond to the claimed
connector (when this element is interpreted to be a nut and bolt
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together) because they cause movement of the support p [late resting
on top (and the glass panel(s) resting on those).
Ex. 1022 ¶¶ 345–346.
Patent Owner does not contest that DE230 teaches the connector
linking a sheet if it discloses a support comprising a sheet. In that regard, as
we have already determined, based on our review of the evidence of record,
Petitioner has shown that DE230 discloses “a support, said support
positioned to contact the glass floor unit” (claim 1) such that it “compris[es]
a sheet, said sheet being rotatable relative to said adjuster for movement
within said cavity of said glass floor unit” (substitute claim 13) as proposed.
See Section III.D.3.(a)(4).
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a connector, said connector linking said sheet to said
adjuster to effect simultaneous movement of said sheet with relative
movement between said receiver and said adjuster, said movement of said
sheet exerting a force on said glass floor unit to effect relative movement
between said glass floor unit and said base contacting the foundation”
(substitute claim 13) as proposed.
(5) “a hat channel, said hat channel removably
positioned over said adjuster for permitting access
to said adjuster in said cavity from said outer
walking surface”
Substitute claim 13 adds “a hat channel, said hat channel removably
positioned over said adjuster for permitting access to said adjuster in said
cavity from said outer walking surface.” RMTA 2.
Petitioner contends that
DE230 teaches a transverse profile 328 that is positioned over support
plate 322 and adjustable screw mechanism 18 such that removal of the
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transverse profile 328 would permit access to the cavity and the height-
adjustable screw mechanism 18 from the outer or top walking surface
of the floor panel.
A POSA would understand that DE230’s fasteners can be
removed from the transverse profile 328 and the flanges of support
plates 322 so that the transverse profile 328 can be removed to access
DE230’s height-adjustable screw 18. A POSA would understand that
the transverse profile 328 is similar to a hat channel 74 from the ’709
Patent. (Ex. 1016 at 25–26, FIG. 4/10; Ex. 1022 at ¶¶ 349–356).
RMTA Opp. 15.
Petitioner’s characterization of DE230 as disclosing a “hat channel”
as proposed, that is, “removably positioned over said adjuster for permitting
access to said adjuster in said cavity from said outer walking surface,” is
consistent with DE230 Figs. 3 and 4, reproduced above. DE230 Fig. 4
shows element 328 in a channel extending from the support plate
322/height–adjustable screw mechanism 18 to the walking surface of the top
floor panel.
Mr. Macfarlane explains, that as
[i]llustrated in FIG. 4, the transverse profiles 326, 328 are attached to
flanges of support plates 322 with fasteners such as screws, bolts, or
another similar type mechanism. Ex. 1016 at 25, Fig. 4/21. A person
of ordinary skill in the art would understand that the transverse profiles
326, 328 are similar to the hat channel 74 of the ’709 patent.
Ex. 1022 ¶ 351. Mr. Macfarlane further explains the following:
A person of ordinary skill in the relevant art would necessarily
understand that DE230’s screw or bolt can be removed from the
transverse profile 328 so that the transverse profile 328 can be removed
to access DE230’s height–adjustable screw 18 in the cavity between
floor panel 5 and fire protection panel 206. The transverse profile 328
is positioned over the height-adjustable screw mechanism 18 that is in
contact with the underside of the upper layer of floor panels. A person
of ordinary skill in the relevant art would also necessarily understand
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that removal of DE230’s transverse profile 328 would permit access to
the cavity and the height-adjustable screw mechanism 18 from the outer
or top walking surface of the floor panel. Ex. 1015 at 15–16, FIG. 4/10.
Id. ¶ 354.
Patent Owner provides no substantive argument contesting that
DE230 discloses “a hat channel” as claimed. See generally RMTA and
RMTA Reply 11–13.
Based on our review of the evidence of record, Petitioner has shown
that DE230 discloses “a hat channel, said hat channel removably positioned
over said adjuster for permitting access to said adjuster in said cavity from
said outer walking surface” (substitute claim 13) as proposed.
(6) The motivation to combine DE230 and Rae
with a reasonable expectation of success
We stated with respect to claim 1, that “[b]ased on our review of the
evidence of record, Petitioner has shown that the combination of DE230 and
Rae would lead one to the ‘glass floor unit’ as claimed. Petitioner has also
shown that DE230 discloses ‘base,’ ‘support,’ ‘receiver,’ ‘adjuster’ and
‘connector’ as claimed.” Section II.G.1.(g).
Here, with respect to (1) “having an outer walking surface, said glass
floor unit having a cavity;” (2) “said adjuster positioned in said cavity;”
(3) “said support comprising a sheet, said sheet being rotatable relative to
said adjuster for movement within said cavity of said glass floor unit;”
(4) the connector; and (5) “a hat channel, said hat channel removably
positioned over said adjuster for permitting access to said adjuster in said
cavity from said outer walking surface;” based on our review of the evidence
of record, Petitioner has shown these are disclosed in DE230 and Rae.
Patent Owner argues in its Revised Motion to Amend that
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the proposed substitute claims teach a structure not shown or obvious
from the ’475 patent [i.e., Rae], DE230, and/or DE759.
The ’475 patent does not include the adjustment mechanism of
the proposed substitute claims that calls for new elements in the form
of an adjuster within a cavity that moves a sheet within the cavity,
where the sheet contacts the glass floor unit. Also, the sheet may be
rotatably positioned in the cavity. In addition, the new element of a hat
channel is called for and is used to permit access to the adjuster from
the outer walking surface of the glass floor unit.
Further, neither DE230 nor DE759 show the new elements of the
proposed substitute claims. DE230 and DE759 provide for jack that
supports a floor above. There is no structure shown in DE230 and
DE759 for gaining access to the jack once the above floor is in place.
In other words, DE230 and DE759 lack the new elements shown in the
proposed substitute claims.
RMTA 9–10.
The argument concerning Rae (i.e., the ’475 patent) does not
undermine Petitioner’s position because Petitioner’s position is that DE230
discloses the adjustment mechanism of the proposed substitute claims (as
well as the adjustment mechanism of claim 1), not Rae.
Patent Owner’s bare statements that DE230 does not disclose the
support sheet and hat channel and that DE230 discloses a “jack” provide
insufficient detail of a difference between the support sheet and hat channel
as proposed and what DE230 discloses in that regard.
Patent Owner further argues that
Rae shows a two-component glass system that is separated by a
load transferring means such that load on the upper structural glass
layer is transferred from the separated fire glass layer which constitutes
a bypass.
Substituting the screw mechanism of DE230 for the Rae prefixed
glazing bead 30, welded steel strip 24, and ceramic fiber tape 28b, and
the disassembly of the DE230 floor support to remove transverse
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profile 328 would still come outside the scope of Patent Owner's claims
13–19.
RMTA Reply 11.
The difficulty with this argument is that it is based on reading the
claim limitation “glass floor unit” as a single unit. As we stated in
addressing a similar argument by Patent Owner with respect to said
limitation in claim 1,
there is no requirement, for example, that the two components be
unmovable with respect to each other or that any force exerted on one
component should necessarily be exerted on the other. The argument
is not commensurate in scope with what is claimed.
Section II.F.1.(a). The argument is not commensurate in scope with what is
claimed.
Furthermore, as Petitioner argues
PO’s argument that combining the teachings of DE230 with Rae
would only move the structural layer of Rae upwardly (Paper #43 at 12)
is attorney argument, and is contradicted by the testimony of
Petitioner’s expert. Petitioner’s expert states Rae teaches a two-
component, one-piece glass floor unit having a cavity between the first
and second layers of glass. (Ex. 1014 at 3:18–21, 7:23–61, Fig. 6;
Ex. 1022 at ¶¶ 306–314; Paper 34 at 7) A POSA would have been
motivated to combine DE230 with Rae to provide a single piece glass
unit that is easier to install during construction as compared to separate
sheets of glass. (Ex. 1022 at ¶¶ 306–314; Paper 34 at 7).
RMTA Sur-Reply 13.
As Mr. Macfarlane explains:
It is well known in the construction field, and was at the time that
the invention was made, that glass flooring can provide multiple
benefits in building construction, including enhanced lighting within a
building and dramatic viewing opportunities (as seen, for example, in
many modern skyscrapers, including the CN Tower in Toronto, the
Tokyo Sky Needle and even the refurbished Eiffel Tower in Paris). A
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person of ordinary skill would also realize the benefits of providing a
two-component, single-piece glass unit as taught by Rae as a single
piece glass unit (Fig. 6) is easier to install during construction than
compared to separate sheets of structural glass and fire rated glass (Fig.
3).
Ex. 1022 ¶ 313.
Substituting DE230’s support tube (14, see DE230’s Fig. 3), including
DE230’s height–adjustable threaded mechanism (locknut included) seated
therein, for Rae’s steel strip (24, see Rae Fig. 3) does no more than yield a
fire rated glass flooring system with an adjuster configured to interact with a
receiver (i.e., DE230’s support plate 22) “to produce relative movement
between said receiver [i.e., DE230’s support tube] and said [threaded]
adjuster” (claim 1), thereby reaching the claimed mechanism for forming a
floor structure resting on a foundation.
Because DE230 and Rae disclose the limitations (1) “having an outer
walking surface, said glass floor unit having a cavity;” (2) “said adjuster
positioned in said cavity;” (3) “said support comprising a sheet, said sheet
being rotatable relative to said adjuster for movement within said cavity of
said glass floor unit;” (4) the connector; and (5) “a hat channel, said hat
channel removably positioned over said adjuster for permitting access to
said adjuster in said cavity from said outer walking surface,” that are
proposed to be added to claim 1, substituting using glass (as Rae discloses)
as the material for DE230’s floor unit in reaching the mechanism for
forming a floor structure resting on a foundation set forth in claim 1
necessarily includes said limitations. “When a patent ‘simply arranges old
elements with each performing the same function it had been known to
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perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 416.
(7) Secondary Considerations
Patent Owner’s Reply to Petitioner’s Opposition to the RMTA (paper
35) includes a section entitled “V. FURTHER COMMENTS AS TO
ALLOWABILITY OF PROPOSED SUBSTITUTE CLAIMS 13–19 OVER
THE PRIOR ART CITED BY PETITIONER.” RMTA Reply 13. In this
section, “Patent Owner points out the advantages of the mechanism found in
revised claims 13–19 of the ’709 patent.” Id.
Most notably, in the ’709 patent, FIGS. 3 and 4, as well as the
specification column 3, lines 15–67 and column 4, lines 1–10, describe
the support 58 in the form of a sheet that is rotatable relative to the
adjuster 66, which permits the mechanism of the ’709 patent to be
installed and adjusted after the placement of floor structure 12 on base
32 (emphasis added). Any of the combination of references cited by
Petitioner results in a structure that is only installed and adjustable prior
to floor installation.
FIG. 4 depicts such rotational movement of support 58. In this
Figure, the adjustment mechanism 10 is positioned as shown in FIG. 3
in cavity 62 and support 58 is rotated into position, relative to bolt 66
of adjuster 64. Such rotation permits contact of support 58 with glass
portions 20 and 22, to allow up or down movement of floor structure
12.
As stated heretofore, none of the prior art considered in the
present proceeding recognizes the need to effect the lifting or lowering
of a floor after installation of the same. Moreover, none of the prior art
references taken alone or in combination show a rotatable support that
moves relative to an adjuster to achieve this result.
Id. at 13–14.
The difficulty with this argument is that it is not commensurate in
scope with what is claimed. The claims do not reflect the argued-over
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difference between “permit[ting] the mechanism of the ’709 patent to be
installed and adjusted after the placement of floor structure 12 on base 32”
(id.) and “a structure that is only installed and adjustable prior to floor
installation” (id.). The claims are directed to an apparatus (i.e., “[a]
mechanism”), not a method of installing a floor structure using said
apparatus. We agree with Petitioner that “PO argues that none of the
references recognize lifting or lowering of a floor after installation (Paper
#43 at 14); however, Petitioner asserts this limitation is not found in the
revised claims.” RMTA Sur-Reply 14.
(8) Conclusion
Based on our review of the evidence of record, we are persuaded the
Petition demonstrates by a preponderance of the evidence that substitute
claim 13 would have been unpatentable as obvious over the combined
teachings of DE230 and Rae.
(b) Substitute Dependent Claims 14–19
Petitioner states that “[r]evised substitute dependent claims 14–19
correspond directly to original dependent claims 2–7.” RMTA Opp. 16.
Patent Owner has provided no argument challenging Petitioner’s
contention.
Based on our review of the evidence of record, for the reasons
discussed with respect to the challenge as to the patentability of claims 2–7,
we are persuaded Petitioner demonstrates by a preponderance of the
evidence that substitute claims 14–19 would have been unpatentable as
obvious over the combined teachings of DE230 and Rae. See Sections
II.G.2.–12.
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IV. PETITIONER’S MOTION TO STRIKE
Petitioner moves to strike “Patent Owner’s Amended Reply to
Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend (Paper
No. 45 [sic, 44]).” Motion to Strike (Paper 48), 1.
“[W]e grant[ed] Petitioner’s request to file a motion to strike the
Amended Reply” because (a) “the Amended Reply [was] untimely” and (b)
[w]e appreciate[d] Petitioner’s assertion that it “now has less than half
the time that it should have had to prepare and file its Sur–Reply (Due
Date 7) – a date which cannot be extended – Petitioner has been
substantially prejudiced by Patent Owner’s late filing of Patent
Owner’s Amended Reply.” Ex 3003, 1.
Order, Paper 46, 3 and 4.
Petitioner’s reason for moving to strike Patent Owner’s Amended
Reply is that “Petitioner will never have an opportunity under the Board’s
Revised Scheduling Order to respond to Patent Owner’s Amended Reply.”
Id. at 3.
However, because Patent Owner withdrew its Amended Reply we
have not considered it in determining the patentability of any of the claims
of the ’709 Patent or the proposed substitute claims set forth in the Revised
Motion to Amend (Paper 37).
Accordingly, striking Patent Owner’s Amended Reply because
Petitioner has not had an opportunity to respond to it is a moot issue.
V. CONCLUSION
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that the challenged claims of the ’709 patent are unpatentable,
as summarized in the following table:
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Claims 35
U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–12 102 Webcor/Obayashi
Joint Venture
1–12
1–12 103 Rae and DE759 1–12
1–12 103 DE230 and Rae 1–12
1, 7, 8 § 112(b) Indefiniteness 7, 8 1
Overall
Outcome
1–12

Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 13–19
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 13–19
Substitute Claims: Not Reached

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–12 of the ’709 patent have been proven to
be unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend (Paper 37) is denied;
FURTHER ORDERED that Petitioner’s Motion to Strike (Paper 48)
is denied; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Donald McPhail
Ryan White
Elizabeth Shuster
TAFT, STETTINIUS & HOLLISTER LLP
dmcphail@taftlaw.com
rwhite@taftlaw.com
eshuster@taftlaw.com

For PATENT OWNER:

Theodore Bielen, Jr.
BIELEN, LAMPE & THOEMING
bielenlt@yahoo.com