Trials@uspto.gov Paper No.

13
571-272-7822 Entered: May 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

CATERPILLAR INC.,
Petitioner,

v.

WIRTGEN AMERICA, INC.,

Patent Owner.
____________

Case IPR2018-00155
Patent 9,624,628 B2
____________

Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and

KEVIN W. CHERRY, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 318(a)
IPR2018-00155
Patent 9,624,628 B2
I. INTRODUCTION
A. Background
Caterpillar, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1, 2, 5, 6, 9–22, and 27–29 of U.S. Patent No.
9,624,628 B2 (“the ’628 patent”). Paper 1 (“Pet.”). Wirtgen America Inc.
(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
We instituted an inter partes review of all the challenged claims in the ’628
patent on all of the grounds asserted by Petitioner. Paper 8 (“Dec. Inst.”).
Patent Owner did not file a Patent Owner Response and the parties did not
request oral argument.
We cautioned Patent Owner in our Scheduling Order that “any
arguments for patentability not raised in the Response will be deemed
waived.” Paper 9. To the extent Patent Owner raised arguments in the
Preliminary Response that we do not address here, those arguments are
waived. Because Patent Owner raised certain issues relevant to claim
construction and obviousness in its Preliminary Response that we find
helpful as part of our independent assessment of whether Petitioner has met
its burden—to show by a preponderance of the evidence why the challenged
claims are unpatentable, we do address as part of our analyses, certain Patent
Owner arguments pertinent to Petitioner’s burden. That burden of
persuasion remains with Petitioner, and never shifts to Patent Owner. See
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (discussing the burdens in our administrative review
process).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a).

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In light of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) and
“Guidance on the Impact of SAS on AIA Trial Proceedings,” issued by the
Office, April 26, 2018 (“Office Guidance”), we instituted review of all
challenged claims and all grounds presented in the Petition. Dec. Inst. 2.
Since institution of this proceeding, we determined in our Final Written
Decision in a previous proceeding, IPR2017-02186, entered May 2, 2019,
that claims 1, 2, 5, 6, 9, 10, 12–16, 18–22, and 27–29 of the ’628 patent—are
unpatentable. Because the prior art references asserted here are offered
essentially as alternative prior art references to those upon which we have
already determined these same claims to be unpatentable, and because as
explained in further detail below, our review reveals substantial similarity
and overlap with the references asserted against the claims in this case and
the references asserted in IPR2017-02186, we also find these same claims
unpatentable in this Decision.
Notably, we did not find in IPR2017-02186 claims 11 and 17 to be
unpatentable. Now, having reviewed the arguments of the parties and the
supporting evidence in this proceeding, we find that Petitioner has
demonstrated by a preponderance of the evidence that the challenged
dependent claims 11 and 17 of the ’628 patent, as well as their respective
base claims 1 and 15—are unpatentable.
B. Additional Proceedings
The parties indicated that the ’628 patent is being asserted by Patent
Owner against Petitioner in other proceedings, namely, Wirtgen America,
Inc. v. Caterpillar Prodotti Stradali S.r.L. et al., Civ. No. 0:17-cv-02085, in
the United States District Court for the District of Minnesota, and also in
Wirtgen America, Inc. v. Caterpillar, Inc., Civ. No. 1:17-cv-00770 in the

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United States District Court for the District of Delaware. Pet. 93–94; Paper
5, 2–3. Petitioner indicated, prior to entry of our Decision on Institution,
that these lawsuits were stayed pending resolution of ITC Investigation
No. 337-TA-1067, entitled “Certain Road Milling Machines and
Components Thereof” (USITC, filed July 19, 2017). 1 Pet. 93
As noted above, in IPR2017-02186, Petitioner challenged the same
claims in the ’628 patent as in this proceeding. A Final Written Decision
was entered in IPR2017-02186, finding claims 1, 2, 5, 6, 9, 10, 12–16, 18–
22, and 27–29 of the ’628 patent—are unpatentable. We did not find claims
11 and 17 unpatentable. See Case IPR2017-02186, slip op. at 46–51 (PTAB
May 1, 2019) (Paper 10).
C. The ’628 Patent
The ’628 patent (Ex. 1001), titled “Auxiliary Drive,” describes a
roadway construction machine such as a cold milling machine having a
milling drum for scarifying a road surface. Ex. 1001, 1:26–39. The milling
drum is equipped with exchangeable tools on its outer surface, and these
tools need to be replaced from time-to-time due to wear and breakage. Id. at
1:39–44. Annotated Figure 2 of the ’628 patent is reproduced below.

1
Just prior to the Board’s institution in this proceeding, the Administrative
Law Judge granted Patent Owner’s motion to terminate the ITC
investigation as to the ’628 patent. See Certain Road Milling Machines and
Components Thereof, Inv. No. 337-TA-1067, USITC (March 27, 2018)
(Order No. 30) (Granting motion to terminate investigation as to ’628
patent.).

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Figure 2 of the ’628 patent, above, depicts basic drive line components of a
construction machine including main drive motor 6 (highlighted yellow)
powering work drum 8 via belt drive 16, as well as auxiliary drives 20’ and
20’’ (highlighted green), and reduction gear 25 for milling a road surface.
Exchangeable tools 14, for engaging a road surface, are shown on the
external surface of drum 8. Id. at 5:23–35. Auxiliary drives 20’ and 20’’
illustrate alternative embodiments, essentially showing that an auxiliary
drive may be positioned in various locations along the drive line. Id.
The ’628 patent describes that during or after milling operations tools
14 may have to be replaced. Id. Upon raising drum 8 away from the ground
surface, an auxiliary drive 20 (shown alternatively in Figure 2 as 20’ and
20’’), “can be coupled to the drive line to rotate the work roller in its raised
condition by a predetermined or selectable rotational angle.” Id. at 2:5–7.
The auxiliary drive provides torque delivering a more accurate and safe

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rotation of the drum during maintenance as compared to drive motor 6, in

order to “rotate the work roller by a small rotational angle to bring not yet
exchanged tools into a more convenient mounting position.” Id. at 2:11–13.
Rotating the drum by the auxiliary drive is also done for efficiency, safety
reasons, and accident prevention. Id. at 1:59–61. The ’628 patent also
explains that for such maintenance procedures “the drive motor for the work
roller is out of operation or decoupled.” Id. at 2:19–20.
D. Illustrative Claim
Claims 11 and 17 depend from independent claims 1 and 15
respectively. Claims 1 and 11, reproduced below, illustrate the claimed
subject matter:
1. A construction machine for the treatment of ground surfaces,
comprising:
a machine frame;
a work drum supported from the machine frame and including
exchangeable tools fastened to the work drum;
a drive line including a work motor and a transmission
connecting the work motor to the work drum, the
transmission including:
a belt drive including a motor-side pulley, a drum-side pulley,
and at least one drive belt connecting the motor-side pulley to
the drum-side pulley; and
a reduction gear arranged internally of the work drum and
connected to the drum-side pulley; and
an auxiliary drive mounted at a location on the construction
machine and including an auxiliary drive motor, the auxiliary
drive having a first configuration in which the auxiliary drive
motor is coupled to the work drum via at least a portion of the
transmission to rotate the work drum, the auxiliary drive
having a second configuration in which the auxiliary drive

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remains mounted at the location on the construction machine

and the work drum can be rotated by the work motor.
11. The construction machine of claim 1, wherein the auxiliary
drive is coupled to the transmission coaxially to a rotational
axis of the drum-side pulley.
Ex. 1001, 6:6–28, 60–62 (emphasis added). Independent claim 15 is a
similar apparatus claim to claim 1, but includes the further limitations of “a
drive coupling” and “a pump distributor drive.” Id. at 7:21–53. Claim 17 is
exactly the same as claim 11, except it depends from independent claim 15.
Id. at 7:56–58.
E. The Instituted Grounds of Unpatentability
Petitioner contends that challenged claims 1, 2, 5, 6, 9–22, and 27–29
are unpatentable on the following specific grounds.2
References Basis Claims
Challenged
PM-565 Operation Manual 3 and PM-565 Parts § 103 21 and 27–29
Manual 4
PM-565 Operation Manual, PM-565 Parts § 103 1, 2, 5, 6, 9–20,
Manual, and one of Smith, 5 or Neuper 6 and 22

F. The Level of Ordinary Skill in the Art

Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems

2
Petitioner supports its challenge with the opinion testimony of Lee A.
Horton, P.E. (Ex. 1009). See infra.
3
Ex. 1003, PM-565 COLD PLANER, OPERATION & MAINTENANCE MANUAL,
Caterpillar, (Jan. 1995).
4
Ex. 1004 PM-565 COLD PLANER, PARTS MANUAL, Caterpillar, (Dec. 1994).
5
Ex. 1006, GB 2060794 B, App’l. No. 8032569 (Pub. May 7, 1981).
6
Ex. 1007, GB 2208237 B, App’l. No. 8816683 (Pub. July 15, 1987).

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encountered in the art: (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology, and
(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82
(Fed.Cir.1983)). Not all such factors may be present in every case, and one
or more of these or other factors may predominate in a particular case. Id.
Moreover, these factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
In determining a level of ordinary skill, we also may look to the prior
art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, the Supreme Court informs
us that “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Petitioner asserts that “a person of ordinary skill in the art for the ’628
patent would have 1) a bachelor’s degree in mechanical engineering or an
equivalent degree, and two to five years of experience working on mobile
construction machine design, or 2) seven to ten years of experience working
on mobile construction machine design.” Pet. 13 (citing Ex. 1009 ¶ 18).
Patent Owner does not expressly disagree with Petitioner’s position or
substantively address the level of ordinary skill in the art in its Preliminary
Response.
As we noted in our Decision on Institution, neither party provides a
detailed analysis addressing the factors described above. However, the prior
art reflects certain technical knowledge and a background in mechanical

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engineering and design of mobile road-building equipment systems,

including cold-planar equipment, power transmission systems, mechanical
drive systems, electronics and/or hydraulic control systems for mining and
roadway construction work vehicles. See e.g., Ex. 1001, 1:26–62; Ex. 1003,
4, 34, 60–61; Ex. 1004, 1–3; Ex. 1005, 1:66–7:19; Ex. 1006, 1–2. Similar to
our Decision on Institution, and in accordance with the prior art and the
obviousness challenges presented by Petitioner, we determine that the level
of ordinary skill in the art includes a person having a bachelor’s degree in
mechanical engineering or an equivalent degree, and two to five years of
experience working on mobile construction, mining, and agricultural
machine design, or an equivalent balance of education and work experience
in design and construction of mobile construction, mining, and agricultural
machines.
II. CLAIM CONSTRUCTION
A. Legal Standard
In this inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
(2017); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
(upholding the use of the broadest reasonable interpretation standard).7

7
On October 11, 2018, the USPTO revised its rules to harmonize the
Board’s claim construction standard with that used in federal district court.
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change,
however, applies to petitions filed on or after November 13, 2018, and
therefore does not apply to this proceeding. Id.

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Claim terms are given their ordinary and customary meaning as would
be understood by a person of ordinary skill in the art at the time of the
invention and in the context of the entire patent disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007), see also Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996 (“Although words in
a claim are generally given their ordinary and customary meaning, a
patentee may choose to be his own lexicographer and use terms in a manner
other than their ordinary meaning, as long as the special definition of the
term is clearly stated in the patent specification or file history.”). We apply
this standard to the claims of the ’628 patent.
B. Auxiliary Drive
Petitioner asserts that no claim construction of any term is required.
Pet. 13. Patent Owner, on the other hand, contends in their Preliminary
Response that “auxiliary drive,” as recited for example in claim 1, “must be
independently powered,” i.e., “not powered by the main engine.” Prelim.
Resp. 6.
In our Decision on Institution, we explained that this proposed
construction is directed really to how the auxiliary drive is powered, rather
than what it is. Dec. on Inst. 8. Patent Owner points out that the plain and
ordinary meaning of “auxiliary” is “used as a substitute or reserve in case of
need.” Prelim. Resp. 25 (citing Ex. 2011). Patent Owner argues, however,
that this definition does not give a full and accurate meaning in light of the
specification of the ’628 patent. Id. In support of its claim construction,
Patent Owner relies upon an explanation in the Specification allegedly
describing inoperability of the main drive motor when the auxiliary drive is
employed, i.e., when the auxiliary motor is operating “[d]uring this period,

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the drive motor for the work roller is out of operation or decoupled.” Id.
(citing Ex. 1001, 2:19–20).
We are not persuaded on the full record now before us in this
proceeding that the claims require that the claimed “auxiliary drive” must be
“independently powered.” Nowhere in the specification or claims does
Patent Owner show that the term “independently powered” describes the
auxiliary drive. See Prelim. Resp. 24–25. Patent Owner does not point to,
nor can we find in the specification any evidence or explanation of an
express control, or power, relationship (or the lack thereof) between the
drive motor and auxiliary motor. Id. To the extent Patent Owner refers to
use of the term “independent auxiliary drive” during prosecution, to describe
the auxiliary drive in U.S. Application No. 10/312,622 (a parent application
of the ’628 patent that issued as U.S. Patent No. 7,644,994), this description
read in context appears to relate to the mechanical coupling of the auxiliary
drive unit to the drive train and work drum transmission, not how the
auxiliary unit is powered. See Prelim. Resp. 27 (citing Ex. 1002, 187).
Wirtgen described, for example, that an “independent auxiliary drive can be
coupled to the belt drive, with the drive motor being decoupled from the belt
drive.” Ex. 1002, 187. In other words, we cannot discern from either Patent
Owner’s explanation, or the ’622 application prosecution history, that the
auxiliary drive is entirely “independent” and therefore, “not powered,” by
the main engine.
We also find no specific disavowal in the Specification of the ’628
patent that the drive motor cannot power the auxiliary drive. The ’628
patent explains that the auxiliary drive “preferably” can be an electric,
hydraulic, or pneumatic motor. See Ex. 1001, 3:29–35, 5:35–48. Indeed,

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even if we assume an embodiment where the drive motor “is out of

operation” and not powering the auxiliary drive, the phrase in the written
description relied upon by Patent Owner states also an alternative, where the
drive motor is simply “decoupled” from the transmission. Id. at 2:19–20. It
is entirely understandable to a person of ordinary skill in the art that an
electrically powered auxiliary motor, or a hydraulic or pneumatic operated
auxiliary motor, is still driven, indirectly, via an alternator/generator or a
pump powered by the drive motor, even if, mechanically speaking, the drive
motor is decoupled and not influencing the drive line. See Ex. 1001, 3:29–
35, 5:35–48, 4:14–18, see also Ex. 1009 ¶ 18.
In the proposed construction, Patent Owner’s implicit interpretation of
“decoupled” in the written description, assumes a complete separation, e.g.,
total mechanical, hydraulic, and electrical, etc., separation, of the main drive
motor from both the work drum and the auxiliary motor. See Prelim.
Resp. 7–8 (“Because the drive motor is out of operation or decoupled when
the auxiliary drive is rotating the work roller the claimed auxiliary drive
must be independently powered.”). The Specification however, read in
context, uses the term “coupled” and “decoupled” to describe the mechanical
transmission connection between the auxiliary drive and the work drum, not
necessarily, if at all, a power connection between the drive motor and the
auxiliary motor. See Ex. 1001 2:6–6 (“[A]n auxiliary drive can be coupled
to the drive line to rotate the work roller.”). Indeed, the related paragraphs
and technical discussion relating to the sentence referred to by Patent Owner
to support this position, are reasonably understood as directed to the
mechanical drive line transmission between the drive motor, auxiliary motor
and the work roller. See id. at 2:4–65. (The ’628 patent describes for

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example “that the motor-side pulley of the belt drive can be decoupled from
the drive motor by means of a coupling unit.”).
We appreciate that it is an important aspect of the ’628 patent to rotate
the work drum by use of the auxiliary motor for safety reasons and to more
accurately control rotation for tool replacement procedures. Id. at 1:59–62.
What we do not find anywhere in the specification or claims is persuasive
evidence supporting the assertion that the “auxiliary drive” is limited to
being “independent” of and “not powered by the main engine,” as Patent
Owner proposes. For instance, the ’628 patent states that an electric
auxiliary drive “can be powered by a generator.” Id. at 5:37. However,
something has to power, e.g., provide mechanical rotation, to the generator
to produce electricity. A person of ordinary skill in the art would understand
that the main drive motor, even decoupled from the work drum transmission,
is one option for powering the generator.
On the complete record now before us, and under the broadest
reasonable interpretation, we are persuaded that “auxiliary drive” should be
construed in accordance with its plain and ordinary meaning, that is—as an
alternative or substitute drive that is used when needed.
III. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in its Preliminary Response to determine whether
Petitioner has met its burden under 35 U.S.C. § 316(e).
A. The Legal Constructs of Obviousness
Section 103(a) forbids issuance of a patent when “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

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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR , 550 U.S. at 406.
The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when available, evidence
such as commercial success, long-felt but unsolved needs, and failure of
others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”). The Court in Graham explained that these factual inquiries
promote “uniformity and definiteness,” for “[w]hat is obvious is not a
question upon which there is likely to be uniformity of thought in every
given factual context.” Graham, 383 U.S. at 18.
The Supreme Court made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
Whether a patent claiming the combination of prior art elements would have
been obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To reach this conclusion, however, it is not enough to show
merely that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
that a person of ordinary skill at the time of the invention “would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id.

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Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F. 2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
claimed invention must be considered as a whole in deciding the question of
obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
§ 103 is not whether the differences themselves would have been obvious.
Consideration of differences, like each of the findings set forth in Graham,
is but an aid in reaching the ultimate determination of whether the claimed
invention as a whole would have been obvious.”) (citation omitted).
As a factfinder, we also must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
“recourse to common sense” or to that which the prior art teaches. Id.
Against this general background, we consider the references, other
evidence, and arguments on which the parties rely.
A. Claims 1, 2, 5, 6, 9–22, and 27–29— Alleged obviousness over
PM-565 Operation Manual and PM-565 Parts Manual, or PM-565
Operation Manual, PM-565 Parts Manual, and one of Smith, or
Neuper
Petitioner asserts that claims 1, 2, 5, 6, 9–22, and 27–29 would have
been obvious over either Operation manual and Parts Manual (claims 21 and
27–29) or Operation Manual, Parts Manual and one of Smith or Neuper
(claims 1, 2, 5, 6, 9–20, and 22). Pet. 30–58. Petitioner presented these
grounds as separate challenges. Pet. 14. We address these grounds together

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because, as discussed above, certain claims in both grounds have been

previously determined unpatentable in IPR2017-01286.
Overall, Petitioner has proved by a preponderance of the evidence that
claims 1, 2, 5, 6, 9–22, and 27–29 are unpatentable for the reasons explained
below.
1. PM-565 Operation Manual
The PM-565 Operation Manual (“Operation Manual”) is, as the title
states, the operation manual for the PM-565 cold milling machine
manufactured by Caterpillar. Ex. 1003, 1–4. 8 A photograph of Caterpillar’s
PM-565 machine is reproduced from Operation Manual below.

Id. at 4. Operation Manual explains that the PM-565 as depicted above in

the photograph, “is used for cold milling pavement to restore the surface to a
specified grade and slope.” Id.
Operation Manual shows and describes various operational and
structural aspects of the PM-565 including a machine having a frame, a belt

8
We refer to Petitioner’s added page numbering at the bottom left of each
page of Exhibit 1003.

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drive system, and a drum as shown below in another figure reproduced from
Operation Manual.

Id. at 63. The figure above shows a drum with replaceable tools and
reference number 3 pointing to a rotor switch to operate an auxiliary rotor
(drum) drive. Id. Auxiliary rotor drive is shown in the figure below, also
reproduced from Operation Manual.

Figure 3, from Operation Manual, page 62, as shown above, depicts

auxiliary rotor drive in a service position. Also, auxiliary rotor drive also
has a different storage position. Id. at 62. In other photographs and

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descriptions, Operation Manual discloses a main engine and a planetary gear

reduction mechanism. See id. at 15, 119.
2. PM-565 Parts Manual
The PM-565 Parts Manual (“Parts Manual”) is, as billed, the parts
manual for the PM-565 cold milling machine manufactured by Caterpillar.
See Ex. 1004, 3 (“Caterpillar Parts Manuals include illustrations of the
groups or assemblies which make up the machine.”). The descriptions and
illustrations in Parts Manual shows the standard components and many of
the attachments for each machine.” Id.
By way of example, Parts Manual illustrates various components of
the PM-565 machine, such as a main engine reproduced below.

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Id. at 47. The figure above is a technical illustration and component list of
part of the engine block for the PM-565. Also, below is a partially

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reproduced figure depicting a work drum drive line system from Parts
Manual.

Id. at 197. The partial figure, above, from Parts Manual, depicts a belt drive
including motor side (sheave) pulley 4, drum-side (sheave) pulley 5, idler 6,
and belt 7. Id. at 197–8.
3. Smith
Smith discloses a mining machine including a rotary cutting disc
“provided with a plurality of picks each releasably located in, and projecting
from, a pick box, a plurality of which boxes are welded to the cutting disc at
various locations.” Ex. 1006, 1.9 Smith explains that these picks often need

9
We reference what appears to be the original page numbers (sometimes
hand-written) at the top of each page of Smith’s written description.

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to be replaced, and that during such replacement operations, “a secondary,

hydraulic motor [is] operable to rotate the cutting disc at slow speed when
mineral cutting operations are not being effected.” Id. at 2.
Smith illustrates, in annotated Figures 4 and 5 below, an embodiment
of a transmission having alternative drive lines shown highlighted in yellow.

Figure 4 of Smith, above, depicts one embodiment of a transmission with

primary drive line 30 highlighted in yellow, a main motor unit (not shown)
driving input shaft 19 which, via clutch 28, drives pinion 27 on output shaft
20 to turn the rotary cutting disc during mineral cutting operations. Id. at 11.

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Smith’s annotated Figure 5, above, depicts a secondary drive line of the

transmission with main motor unit (not shown) driving input shaft 19, and
with clutch 28 not engaged with either pinion 26 or 27, so that input shaft 19
drives, directly, only hydraulic pump 23. Id. at 11–12. Pump 23 drives
hydraulic motor 31 via hydraulic line 30A in a “slow drive condition.” Id. at
11. Smith explains that the primary drive line in Figure 4 is for cutting
operations, whereas the secondary drive line illustrated in Figure 5, “[t]his
slow drive condition is employed for pick inspection/replacement.” Id.
at 11–12.
4. Neuper
Neuper discloses a “roadway-driving and winning-machine with
rotatably mounted cutter heads or cutter drums, on which bits are secured.”
Ex.1007, 1.10 Figure 1 of Neuper is reproduced below.

10
We refer to the original page numbers of Neuper’s specification

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Neuper’s Figure 1, above, illustrates cutter heads 1 driven by main cutting

motor 4 or, alternatively auxiliary drive motor 6, 6’, all of which are
supported on frame 3. Id. at 6. Neuper explains that drive motor 4 is an
electro-motor and auxiliary motor 6 is a hydraulic motor. Id. Neuper also
explains that auxiliary motor 6 can be mounted coaxial to main motor 4, or
as shown by auxiliary motor 6’, perpendicularly arranged to the driveline.
In either position auxiliary motor 6, 6’ can be selectively coupled to the
cutter heads via respective clutch 5, 5’. Id.

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B. Claims 1, 2, 5, 6, 9–22, and 27–29

Out of all the challenged claims, 1, 2, 5, 6, 9–22, and 27–29,
Petitioner asserts that claims 21 and 27–29 would have been obvious over
Operation Manual and Parts Manual. Pet. 30–59. Petitioner argues that the
remaining claims, 1, 2, 5, 6, 9–20 and 22, would have been obvious over
Operation Manual and Parts Manual and either Smith, or Neuper. Id. at 59–
93.
As noted above, these are the exact same claims which we addressed
previously in our Final Written Decision in IPR2018-02186. In that
Decision we analyzed these same claims in view of prior art to Haehn, Smith
and one or more of Jakob, Godbersen, Lent, and Schubert. See Case
IPR2017-02186, slip op. at 16–60 (PTAB May 1, 2019) (Paper 10).
Here, in this proceeding, the combinations of Operation Manual, Parts
Manual, and Smith, or Neuper are offered, essentially, as alternatives to the
references we have already addressed and already found unpatentable in
IPR2018-02186 proceeding. We determine, from our review of the prior art
in this proceeding, supra, that the teachings and disclosure of these
alternative references and combinations of prior art are substantially similar
and overlap with the prior art disclosure and teachings in IPR2017-02186.
These references offer nothing substantively new in the way of disclosure,
teaching, and the knowledge and level or ordinary skill in the art, with
respect to claims 1, 2, 5, 6, 9–10, 12–16, 18–22, and 27–29 already
determined to be unpatentable in IPR2017-02186. Therefore, based on the
teachings and disclosure of the applied prior art in this case, as discussed
above, and applying our analysis below determining the appropriateness of

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the combination of the prior art references in this proceeding, we find these
same claims to be unpatentable in this proceeding.
We address in detail below, Petitioner’s challenge to claims 11 and
17, and base claims 1 and 15 by implication.
This is, of course, a separate proceeding from IPR2017-02186 and we
must ensure that Petitioner had provided the necessary articulated reasoning
and evidentiary underpinnings for the relevant prior art and asserted
combination. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). For the reasons that follow, we
determine that Petitioner has adequately supported the combination of
Operation Manual, Parts Manual, and Smith or Neuper with sufficient
articulated reasoning and evidentiary underpinnings.
1. PM-565 Operation Manual and PM-565 Parts
Manual
Petitioner’s argues that a person of ordinary skill in the art would have
known to combine the teachings and disclosure of Caterpillar’s PM-565
Operation Manual and Parts Manual because they cooperatively explain and
describe the same operation and components of the Caterpillar PM-565 Cold
Planer machine. Compare Ex. 1003, 1, 62–63 with Ex. 1004, 1, 197, 470.
These two related references, alone and combined, expressly disclose a
machine frame, a reduction gear, and a work drum having exchangeable
tools for scarifying a roadway surface. Compare Ex. 1003, 62–63 with
Ex. 1004, 470. In addition, Operation Manual discloses “Rotor Service
Door Operation” that teaches a drum housing and a service door, i.e. a lid,
that permits access to the work drum. Ex. 1003, 62–63, 105. Parts Manual

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teaches the arrangement of a reduction gear positioned between the drum

side pulley and the work drum. Ex. 1004, 315, 337, 470.
Together, these references, both expressly drawn to the PM-565 Cold
Planer machine, disclose a drive line including a main motor driving the
work drum through the reduction gear via a belt drive having a motor-side
and a drum-side pulley. Ex. 1003, 4, 117–119, 197. As pointed out by
Petitioner, Operation Manual and Parts Manual also teach an auxiliary drive
that engages the drum side pulley in a service position and rotates the work
drum at a slower speed during maintenance and service procedures. Pet. 50–
52 (citing Ex. 1003, 62–63; Ex. 1005, 20:13–17; Ex. 1006, 11:20–12:2,
13:13–20; Ex. 1009 ¶¶ 105–106;). Also, both references teach that such
service procedures occur with the drum in a raised condition, for safety and
control, as compared to a working speed when the work drum is engaged
with a road surface. Id. Operation and Parts manual teach that the auxiliary
drive rotor can be moved from a storage position to a service position,
whenever it required to perform maintenance procedures. See Ex. 1003, 62–
63.
2. PM-565 Operation Manual, PM-565 Parts Manual,
and Smith or Neuper
Smith teaches an alternative transmission and driveline arrangement
including a dog clutch, which permits the auxiliary drive to remain coupled
to the transmission during a working mode of the machine. Ex. 1005, 9:24–
10:21, 11:24–12:2. Smith’s mining machine and cutting disc, Petitioner
argues, is analogous art and very comparable to a cold planer machine and
work drum as both operate similarly to remove material from a ground
surface. Pet. 65. Petitioner argues, persuasively, that a person of ordinary
skill in the art would have been motivated to modify Operation Manual and

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Parts Manual with Smith’s transmission components because “Smith’s

gearbox arrangement enables the output shaft 20 to be driven by either the
main motor or the auxiliary motor 31 without moving the auxiliary motor 31
or gearbox from their respective locations.” Pet. 67 (citing Ex. 1009 ¶ 141).
Petitioner’s declarant, Mr. Horton testifies that the “benefit of this
configuration is that an operator is not required to spend time or effort
removing, disconnecting, or uncoupling components of the auxiliary drive
from the cutter driveline during maintenance operations.” Ex. 1009 ¶ 141.
For its part, Neuper teaches an over running clutch positioned either
coaxially or perpendicularly, between the auxiliary drive and the driveline
for the work drum of a milling machine. Ex. 1007, 5–8; Ex. 1009 ¶ 149.
Similar to Smith, Neuper’s over running clutch allows the auxiliary drive to
remain mounted at the same location during both maintenance and cutting
operations. Id. Petitioner argues that a person of ordinary skill in the art
“would have readily understood that the overrunning clutch would protect
the auxiliary drive from being overrun by the more powerful main motor.”
Pet. 70 (citing Ex. 1007, 6–7; Ex. 1009 ¶ 147). Mr. Horton explains,
persuasively, that a person of ordinary skill in the art understood the benefits
of Neuper’s clutch design, and “would have recognized that the use of an
overrunning clutch between the auxiliary motor and driveline would enable
the automatic disengagement of the auxiliary motor if the main motor is
activated while the auxiliary motor is running.” Ex. 1009 ¶ 147.
3. Whether Operation Manual teaches “a second
configuration in which the auxiliary drive remains
mounted at the location on the construction machine”
One particular issue we wish to address specifically, relates to the
disclosure of Operation Manual and Patent Owner’s argument that when the

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PM-565 machine is rotating the work drum via the main work motor, the
auxiliary rotor drive is shown removed from its operative location in coaxial
alignment with the drum-side pulley, and placed into a storage position.
Prelim. Resp. 49 (citing Ex. 1003, 62–63). Patent Owner argues that a
person of ordinary skill in the art would not have modified Operation
Manual to leave the auxiliary rotor drive in its operative location in a
“second configuration.” See Ex. 1001, 6:25–28 (Claim 1 recites “the
auxiliary drive having a second configuration in which the auxiliary drive
remains mounted at the location on the construction machine.”). Patent
Owner argues that a person of ordinary skill would not leave the rotor drive
in its service position during cutting operations as this would undesirably
increase the width profile of the PM-565 machine. Prelim. Resp. 49. Patent
Owner contends that “[k]eeping the PM-565 machine’s auxiliary rotor drive
mounted in the service position would negatively affect the distance between
the milling drum and the edge of the machine—the machine would not be
able to mill as close to obstacles such as jersey barriers.” Id.
Independent claims 1 and 15, for example, recite “a second
configuration in which the auxiliary drive remains mounted at the location
on the construction machine.” Ex. 1001, 6:25–27. Petitioner addressed this
issue where it explained that a person of ordinary skill in the art would have
left the PM-565’s rotor drive mounted in its service position “where it is not
driven alongside walls or barriers that may necessitate removal of the
auxiliary drive from the service location.” Pet. 64 (citing Ex.1009 ¶ 134).
The rotor drive would have been removed, Petitioner argues, where working
conditions or an obstacle constrained environment demand a narrower
machine. Otherwise, Petitioner explained, a person of ordinary skill in the

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art would have known to leave the rotor drive mounted in the service
position in order “to reduce the amount of down time spent coupling and
decoupling the auxiliary drive and hydraulic lines before and after every bit
change (which can occur several times per day). Id. (citing Ex. 1009 ¶ 134).
We note that the language of independent claims 1 and 15 does not
require that the auxiliary drive is permanently fixed in a location such that it
cannot be moved. For instance, the claim language and transition,
“comprising,” does not rule out an additional third configuration where the
auxiliary drive would be moved to a different location. Indeed, in the
Summary of the Invention, the ’628 patent describe an embodiment where
“a movable auxiliary drive can be coupled to the belt drive housing.”
Ex. 1001, 3:17–18. In view of this embodiment, although Operation Manual
describes that the rotor drive can be removed from the service position and
stored in an alternate position, we still find Petitioner’s argument is
persuasive. It is reasonable to understand that under the appropriate working
conditions for the PM-565 machine, i.e., conditions with sufficient space
around the machine, an operator would have known to simply leave the rotor
drive in the service position so that “the auxiliary drive remains mounted at
the location on the construction machine,” as called for in independent
claims 1 and 15. Further, Mr. Horton’s unrebutted testimony is persuasive,
that whenever possible, a person of ordinary skill in the art would do this,
“to reduce the amount of down time spent coupling and decoupling the
auxiliary drive and hydraulic lines before and after every bit change.” Ex.
1009 ¶ 134.

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4. Whether Petitioner has adequately explained the

combination of Operation Manual, Parts Manual and
Smith or Neuper
Patent Owner contends that Petitioner has not explained exactly how
to implement a specific auxiliary drive arrangement as disclosed by Smith or
Neuper, in Operation Manual. Prelim. Resp. 39, 45–48. We determine that
such mechanical design and technical considerations, including different
transmission component arrangements, were within the level of ordinary
skill in the art. Mr. Horton explains that a person of ordinary skill in the art,
understanding the benefits of a fixed location auxiliary drive, would have
looked to Smith for a specific gearbox arrangement because, “auxiliary
drives that remain mounted at the same location on the machine during both
main drive operations and auxiliary drive operations were well-known in the
art.” Ex. 1009 ¶ 120, see KSR, 550 U.S. at 415–16 (a “patent for a
combination which only unites old elements with no change in their
respective functions . . . obviously withdraws what already is known into the
field of its monopoly and diminishes the resources available to skillful
men.”) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip.
Corp., 340 U.S. 147, 152-153 (1950)). Additionally, Mr. Horton states that
a person of ordinary skill in the art would have “appreciated that Smith’s
gearbox arrangement enables the output shaft 20 to be driven by either the
main motor or the auxiliary motor 31 without moving the auxiliary motor 31
or gearbox from its respective location.” See Ex. 1009 ¶ 141.
Mr. Horton’s testimony is unrebutted in this proceeding. Indeed,
Patent Owner does not argue or present substantive evidence to support that
incorporating Smith’s secondary hydraulic drive into Operation Manual’s
PM-565 road working machine and belt drive transmission, so that “a

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second configuration in which the auxiliary drive remains mounted at the

location on the construction machine,” as called for in claim 1, is somehow
beyond the level of ordinary skill in the art. Neither our rules, nor the law,
require an instruction manual on how to physically incorporate or combine
the disclosures of separate references. As KSR informs us, “in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR, 550 U.S. at 420. The rationale of
KSR does not support a theory that a person of ordinary skill can “only
perform combinations of a puzzle element A with a perfectly fitting puzzle
element B.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir.
2016). “A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 421.
Overall, we determine that Petitioner has provided sufficient
motivations including the necessary articulated reasoning and evidentiary
underpinnings to support the combination of Caterpillar’s Operation Manual
and Parts Manual with either Smith, or Neuper.
5. Claims 1, 2, 5, 6, 9–10, 12–16, 18–22, and 27–29
have already been determined to be unpatentable in
IPR2017-01286
However, keeping in mind that we have already found claims 1, 2, 5,
6, 9–10, 12–16, 18–22, and 27–29 to be unpatentable in IPR2017-02186, in
the present proceeding Petitioner has not explained, nor can we determine
from our analysis above, that the combination of Operation Manual and
Parts Manual, or Operation Manual and Parts Manual with either Smith, or
Neuper, adds any new or different structural element or method step in
addressing the claim limitations that was not already disclosed and taught by
Haehn, Smith and one or more of Jakob, Godbersen, Lent, and Schubert in

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the prior proceeding. In this case, Petitioner has simply mapped the same
claim elements to aspects of the disclosure and teachings of alternative prior
art and, based on our review and analyses as discussed above, this
alternative prior art generally mirrors the disclosure and teaching of the prior
art in IPR2017-02186. By way of comparison, in IPR2017-02186, Haehn is
relied upon for disclosing a road milling machine having a main motor
driving a reduction gear and a work drum via a belt drive, as called for in
claim 1. See Case IPR2017-02186, slip op. at 17–21 (PTAB May 1, 2019)
(Paper 10). In this proceeding these same limitations are, as discussed
above, expressly disclosed by Caterpillar’s Operation Manual and Parts
Manual. See Ex. 1003, 62; 1004, 315, 337, 470. Because the specific prior
art references in this case, both alone and in combination, are substantially
similar and overlap with those in IPR2017-02186, including teaching the
same structures and functions as in the prior proceeding, we also find these
same claims to be unpatentable in this proceeding in view of Operation
Manual and Parts Manual, or Operation Manual and Parts Manual with
either Smith, or Neuper.
On the facts and evidence in this proceeding, and apart from our
analysis of independent claims 1 and 15, along with dependent claims 11
and 17 below, we are persuaded that claims 2, 5, 6, 9–10, 12–14, 16, 18–22,
and 27–29 are unpatentable over Operation Manual and Parts Manual, or
Operation Manual and Parts Manual with either Smith, or Neuper.
C. Claims 1, 11, 15, and 17
Because independent claims 1 and 15 are the immediate basis for the
subject matter recited in respective claims 11 and 17, we address initially
these independent claims.

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1. Independent claim 1
Petitioner argues that Operation Manual discloses a roadway
“construction machine . . . comprising,” “a machine frame,” and “a work
drum . . . including exchangeable tools.” Pet. 59–60 (citing Ex. 1003, 4, 15,
62, 105, 107, 111; Ex. 1009 ¶¶ 73–81, 125). Petitioner argues that
Operation Manual as properly combined with Parts Manual teaches “a drive
line including a work motor and a transmission.” Id. at 61 (citing Ex. 1003,
36, 98, 108; Ex. 1004, 197–198; Ex. 1009 ¶¶ 82–84, 87–91, 117–119, 126).
Petitioner also argues that Parts Manual shows particular details of the drive
line and transmission—namely a motor-side pulley, a drum-side pulley, and
a drive belt. Id. at 61 (citing Ex. 1004, 197–198; Ex. 1009 ¶ 127).
According to Petitioner, Parts Manual also discloses a reduction gear driven
by the drive belt via the drum-side pulley, that is, “arranged internally of the
work drum,” as called for in claim 1. Id. at 61 (citing Ex. 1004, 470–474;
Ex. 1009 ¶ 128).
Petitioner argues further that Operation Manual discloses an
“auxiliary drive” and that this auxiliary drive is coupled to the transmission
in a first configuration “to rotate the work drum.” Id. at 62 (citing Ex. 1003,
62–63, 118, 119; Ex. 1009 ¶¶ 105, 129–130, 132). Relying on its declarant,
Mr. Horton, Petitioner explains that a person of ordinary skill in the art
would have understood that the auxiliary drive could “remain in the service
location during milling operations (e.g., when the rotor is driven by the main
engine), for example, to reduce the amount of down time spent coupling and
decoupling the auxiliary drive and hydraulic lines.” Id. at 64 (citing
Ex. 1009 ¶ 134).

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In addition, Petitioner argues that Smith, as properly combined with

Operation Manual and Parts Manual, teaches an auxiliary drive that remains
mounted at the same location in a mining machine when “the main electric
motor drives the input shaft 19, which transmits power to the output shaft 20
via gear 24 and pinion 26 through switchable clutch element 28.” Id. at 66
(citing Ex. 1006, 9:24–10:17). Mr. Horton testifies that a person of ordinary
skill in the art “would have readily appreciated that Smith’s gearbox
arrangement enables the output shaft 20 to be driven by either the main
motor or the auxiliary motor 31 without moving the auxiliary motor 31 or
gearbox from their respective locations.” Ex. 1009 ¶ 141.
Patent Owner argues in its Preliminary Response that “Smith’s
secondary hydraulic motor is not independently powered,” and, therefore
“cannot function when Smith’s main engine is switched off or decoupled.”
Prelim. Resp. 39. This is not a compelling argument because it relies on an
incorrect claim construction. The correct claim construction does not
require that the “auxiliary drive,” “must be independently powered,” but that
the ordinary meaning of “auxiliary drive” is “an alternative or substitute
drive that is used when needed.” Section II.B. Therefore, contrary to Patent
Owner’s position, claim 1 does not require that Smith’s auxiliary drive be
independently powered or function entirely apart from the main motor or
engine.
Patent Owner argues further that Petitioner’s incorporation of Smith’s
transmission into the PM-565 machine is hindsight and not sufficiently
explained, and that a person of ordinary skill in the art would not have been
motivated to maintain the auxiliary rotor drive in the same location on the
PM-565 machine “because it would undesirably increase the machine’s

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width.” Prelim. Resp. 39, 45–51. We appreciate that Petitioner has not
explained precisely how each individual, structural component of Smith’s
auxiliary drive would have been specifically arranged and incorporated into
the transmission and drive line of the PM-565 machine disclosed in
Operation Manual and Parts Manual. This is not, however, “hindsight” as
Patent Owner alleges. Id. at 48. Petitioner reasoned that by incorporating
Smith’s auxiliary motor and gearbox, a person of ordinary skill in the art
would have understood the benefit of the work drum disclosed in Operation
Manual “to be driven by either the main motor or the auxiliary motor 31
without moving the auxiliary motor 31 or gearbox from their respective
locations.” Pet. 67 (citing Ex. Ex.1009 ¶ 141). Mr. Horton, whose
testimony is unrebutted in this proceeding, further testified that “an obvious
benefit of this configuration is that an operator is not required to spend time
or effort removing, disconnecting, or uncoupling components of the
auxiliary drive from the cutter driveline during maintenance operations.”
Ex. 1009 ¶ 142.
We are persuaded that a person of ordinary skill in the art would have
been motivated to incorporate, and would have done so without significant
experimentation or difficulty, auxiliary motor 31 including input shaft 19
and output shaft 20 as described by Smith, into the PM-565 machine and
rotating drum transmission. See Ex. 1009 ¶¶ 136–144. Transmission
assemblies and their components are well known to mechanical engineers
and it is well-settled that one of ordinary skill can use his or her ordinary
skill, creativity, and common sense to make the necessary adjustments and
further modifications to result in a properly functioning device. See KSR,
550 U.S. at 418 (“the [obviousness] analysis need not seek out precise

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teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Indeed, Patent Owner has not
provided compelling arguments and corroborating evidence from the prior
art, or from the standpoint of a person of ordinary skill in the art, that
incorporating the auxiliary transmission components of Smith into the PM-
565 machine would have been particularly difficult and beyond the level of
ordinary skill in the art. See Prelim. Resp. 45–51. We do not, therefore, find
convincing Patent Owner’s conclusion that the incorporation of Smith’s
arrangement of transmission components and an auxiliary drive would, in
fact, have necessarily “increase[d] the machine’s width” as Patent Owner
contends. Id. It is well settled that argument of counsel cannot take the
place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A.,
129 F.3d 588, 595 (Fed. Cir. 1997).
We are persuaded that Petitioner and Mr. Horton’s explanations and
evidence here are not hindsight, but espouse a proper motivation and
articulated reasoning reinforced by substantive evidentiary underpinnings
from the prior art as well as the knowledge and level of expertise of a person
of ordinary skill in the art. We are persuaded that there was a motivation,
and a known solution in Smith, capable of being implemented by those of
ordinary skill in the art, to use a secondary or auxiliary drive motor to rotate
a cutting wheel, or drum, such as that of the PM-565 machine, in a highly
controlled manner for pick inspection and replacement operations that could
remain in the same location on the construction machine. We are persuaded
that a person of ordinary skill in the art would have understood that with
Smith’s auxiliary drive incorporated into the PM-565’s driveline would have

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“remain[ed] mounted at the location on the construction machine” during the

main road cutting operations and rotation of the work drum by the work
motor. See Ex. 1009 ¶ 151. (Mr. Horton explained that in Smith’s dog
clutch arrangement “when the main motor is driving the cutting disc, the
auxiliary motor is uncoupled from the cutting disc.”).
On the full record now before us, we are persuaded that Petitioner has
shown by a preponderance of the evidence the necessary articulated
reasoning supported by evidentiary underpinnings to show that claim 1
would have been obvious to a person of ordinary skill in the art over
Operation Manual, Parts Manual, and Smith11.
2. Independent claim 15
Independent claim 15 includes all the limitations of claims 1, 2, 5,
and 6. For example, claim 15 requires a “transmission connecting the work
motor to the work drum,” and “an auxiliary drive” (claim 1), and “in the
second configuration of the auxiliary drive the auxiliary drive motor is
uncoupled from the work drum” (claim 2). Ex. 1001, 6:6–31. Claim 15 also
requires “a drive coupling between the work motor and the motor-side
pulley,” (claim 5) and “a pump distributor drive located between the work
motor and drive coupling,” (claim 6). For purposes of clarity, we address
these limitations below in terms of the noted dependent claims.
With respect to the limitations recited in dependent claim 2, Petitioner
has shown persuasively that Smith’s dog clutch arrangement teaches to
“uncouple” the auxiliary drive from the work drum when the cutting disk is

11
Because we find Petitioner’s combination of Operation Manual, Parts
Manual and Smith persuasive as to the elements of claims 1, 2, 5, and 6, we
do not address the alternative tertiary reference to Neuper.

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in a working configuration. Pet. 71–73 (citing Ex. 1006, 10:18–11:3;

Ex. 1009 ¶¶ 151–153). For dependent claim 5, Petitioner points out
compelling evidence that Parts Manual discloses a “drive coupling” (clutch
1) between the motor-side pulley and drive motor. Pet. 77–78 (citing
Ex. 1004, 197, 206). As for claim 6, Petitioner explains persuasively that
Parts Manual teaches a pump distributor drive between the motor and drive
coupling (clutch), where a crankshaft gear, located on the engine crankshaft
between the motor and output clutch, drives two pump adapters. Pet. 79–81
(citing Ex. 1004, 68, 71, 106, 201).
Our review of the disclosure and teaching of these references, as they
are properly combined, is consistent with Petitioner’s arguments and
evidence with respect to claims 1, 2, 5, 6, and 15. On the full record now
before us, we are persuaded that Petitioner has shown by a preponderance of
the evidence the necessary articulated reasoning supported by evidentiary
underpinnings to show that independent claim 15 would have been obvious
to a person of ordinary skill in the art over Operation Manual, Parts Manual,
and Smith.
3. Claim 11 and 17
Claims 11 and 17 depend directly from independent claims 1 and 15
respectively, and require that “the auxiliary drive is coupled to the
transmission coaxially to a rotational axis of the drum-side pulley.”
Ex. 1001, 6:61–63, 7:56–58.
Petitioner argues that the below reproduced figure from Operation
Manual illustrates that “the auxiliary drive coaxially connects to the drum-
side pulley of the belt drive through an access door in the rotor belt guard
cover.” Pet. 84 (citing Ex. 1003, 62–63, 118).

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Operation Manual’s Figure 6, page 62, depicts the auxiliary rotor drive in a
service position. Ex. 1003, 62.
Patent Owner does not substantively address dependent claims 11
and 17. Patent Owner relies on its argument that the combination of
Operation Manual, Parts Manual, and Smith or Neuper, for the obviousness
analyses of independent claims 1 and 15, from which claims 11 and 17
depend, is deficient. See Prelim. Resp. 39–53. As discussed above, we do
not find Patent Owner’s arguments decrying the combination of the prior art
references in this proceeding compelling
Turning to the specific limitations of claims 11 and 17, we determine
that Operation Manual and Parts Manual, including Figure 3, page 62 of
Operation Manual, showing above PM-565 auxiliary rotor drive in the
service position, along with other corroborating illustrations, photographs
and other evidence teaches “the auxiliary drive is coupled to the
transmission coaxially to a rotational axis of the drum-side pulley,” as
recited in claim 11 and 17. Ex. 1001, 6:61–63, 7:56–58. For example, the

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below Figure from Parts Manual, page 118, shows the drum-side pulley and
rotor drive belt.

The figure above, from Operation Manual, page 118, is a photograph of the
rotor drive belt of the PM-565 machine and the drum-side pulley having a
central square socket. See Ex. 1003, 118; Ex. 1004, 62, 197, see also
Ex. 1009 ¶¶ 171–172. According to Mr. Horton, “the drum-side pulley
includes a square socket to coaxially receive the output shaft of the auxiliary
drive motor.” Ex. 1009 ¶ 172 (emphasis added).
On the full record now before us, we are persuaded that Petitioner has
shown by a preponderance of the evidence the necessary articulated
reasoning supported by evidentiary underpinnings to show that claims 11
and 17 would have been obvious to a person of ordinary skill in the art over
Operation Manual, Parts Manual, and Smith or Neuper.
IV. SUMMARY
Petitioner has proved by a preponderance of the evidence that claims
21 and 27–29 would have been obvious over Operation Manual and Parts
Manual.

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Petitioner has proved by a preponderance of the evidence that claims

1, 2, 5, 6, 9–20, and 22 would have been obvious over Operation Manual,
Parts Manual, and Smith or Neuper.
V. ORDER
For the reasons given, it is
ORDERED, based on a preponderance of the evidence that claims 1,
2, 5, 6, 9–22, and 27–29 are unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
any party to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Joshua L. Goldberg
James R. Barney
David K. Mroz
Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP
joshua.goldberg@finnegan.com
james.barney@finnegan.com
david.mroz@finnegan.com

PATENT OWNER:

Ralph W. Powers III

Jon E. Wright
Kyle E. Conklin
Steve Merrill
Daniel E. Yonan
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
tpowers-PTAB@skgf.com
jwright-PTAB@skgf.com
kconklin-PTAB@skgf.com
smerrill-PTAB@skgf.com
dyonan-PTAB@skgf.com

Ryan D. Levy
John F. Triggs
Seth R. Ogden
PATTERSON INTELLECTUAL PROPERTY LAW PC
rdl@iplawgroup.com
jft@iplawgroup.com
sro@iplawgroup.com

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