Reply Brief in Support of KSR's Motion for Summary ... - Fried Frank

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-- In an Offce Action dated November 6, 2000 (see Exhibit 3 hereto), theExamner of the '422 Application rejected each of the origial "Claims 20-23" as being'unpatentable under 35 U.S.C. § 103(a) in view oftwo references, namely, U.S. Patent'No. 5,460,061 to Redding ("Redding"; see Exhibit 4 hereto) and U.S. Patent No.5,063,811 to Smith ("Sinith"; see Exhibit 5 hereto). Redding discloses an adjustableaccelerator pedal assembly whose accelerator pedal ar (20) slides back and forth alonga guide member (72) (see Exhibit 4 hereto). Smith discloses an electronic pedal positionsensor (28) attached to an accelerator pedal support bracket (40, 26) and engaged with a ,pivot shaft (70) (see Exhbit 5 hereto).-- In concluding that the subject matter recited in origial "Claims 20-23" wasunpatentable under 35 U.S.C. § 103(a), the Examiner stated (see Exhibit 3 hereto, at 2):Smith shows that the use of an electronic throttle control mean (28)attached to a support member (40, 26) in a pedal assembly is old and wellknown in the ar. Since the prior ar references are fromthe field ofendeavor, the purpose disclosed by Brown (sic) would have beenrecognized in the pertinent art of Redding. Therefore, it would have beenobvious at the time the invention was made to provide the device ofRedding with the electronic throttle control means attached to a supportmember as taught by Smith.-- In response to the Examner's rejection of its origial claim, Teleflex did nottraverse, or voice any disagreement with, any of the Examer's reasoning or conclusions'quoted above. Teleflex madeno arguent, for example, that the subject matter recited inorigial "Claims 20-23" was patentable because the recited "electronic control" was"attached to the pedal mounting bracket,ii as opposed to being "attached to the pedalitself," as Teleflex now asserts for the first time in opposition to summar judgment (pltf.Opp. Br. at 10-11). Teleflex also did not traverse, or voice any disagreement with, theExamer's conclusion that at the time of the alleged "invention," a person of ordinar5
skill in the art ofthe '422 Application would have been motivated to combine, and wouldhave considered it obvious to combine, the electronic position sensor disclosed in Smith(see Exhibit 5 hereto) with the adjustable pedal assembly disclosed in Redding (seeExhibit 4 hereto) to arve at what Teleflex was then pointing to, in original Claims 20-23, as the subject matter that Mr. Engelgau purportedly regarded as his "invention. ,,4-- Instead, by a fuher Amendment ofthe '422 Application dated Januar 29,2001 (see Exhibit 6 hereto), Teleflex's patent counsel submitted a wholly new Claim 24(which became Claim 4 ofthe '565 Patent) which excluded the Redding pedal designfrom the scope ofthe subjectmatter sought to be patented through addition ofthelimitation, "wherein the position of said pivot (24) remains constant while said pedal ar(14) moves in fore and aft directions with respect to said pivot (24)" (see Exhbit 6hereto, at 2). The Redding reference, by contrast, disclosed an adjustable pedal assemblywhose accelerator pedal pivot moved durg adjustment (see Exhibit 3 hereto at col. 7,lines 33-38; "As the pedal ar moves fore and aft relative to the adjuster member, carpin 112 rides in ear member slot 76d to. . . selectively adjust the position ofpivot axispin 110").-- Having thus restated the subject matter sought to be patented using claimlanguage that excluded the adjustable pedal design disclosed in Redding, Teleflex'spatent counsel then stated to the Examiner: "Independent claim 24 is a duplicate of clai15 in the parent application except the word 'throttle' has been elimnated from claim 154 35 U.S.c. § 112 ir 2 requires, as a condition to the issuance of a valid patent, that the"specification" of a patent application "conclude with one or more claims paricularlypointing out and distinctly claiming the subjectmatter which the applicant regards as hisinvention. II6
Page 3 and 4: TABLE OF AUTHORITIESPaee(s)Altoona
Page 5 and 6: United Carbon Co. v. Binney & Smith
Page 7 and 8: invalidity under 35 U.S.C: § 103 (
Page 12 and 13: just in case there could be an argu
Page 14 and 15: -- Conventional, off-the-shelf peda
Page 16 and 17: Here there is no dispute as to any
Page 18 and 19: n. "OBVIOUSNESS" MUST BE DETERMIND
Page 20 and 21: Teleflex's argument is erroneous at
Page 22 and 23: Exs. 8-10; KSR Main Br. at 23-27).
Page 24 and 25: elements with no change in their re
Page 26 and 27: mx::0';:¡:-i
Page 28: ,e ePlaintiffTeleflex Incorporated
Page 31 and 32: .. ,). ../ IN THE UNTED STATES PATE
Page 33 and 34: REMAClais 20-23 remai in ths applic
Page 35 and 36: Offce Action Summaryo Responsive to
Page 37 and 38: Serial Number: 09/643,422Page 3Ar.U
Page 39 and 40: mx:J0-;: .t
Page 41 and 42: 'u.s. Patent . Oct. 24, 1995 Sheet
Page 43 and 44: u.s. Patent Oct. 24, 1995 Sheet 3 o
Page 45 and 46: , ,U .8. Patent Oct. 24, 1995 Sheet
Page 47 and 48: "/ )1ADJUSTABLE CONTROL PEDALAPPART
Page 49 and 50: 5adjuster member utizig the guide b
Page 51 and 52: 5,460,0619porton inboard of the slo
Page 53 and 54: PATENT NO. :DATEDJNVENTOA(S) : ,UNI
Page 55 and 56: United States Patent (19)Smith et a
Page 57 and 58: . u.s. Patent Nov. 12, 1991 Sheet 2
Page 59 and 60:
, u.s. Patent Nov. 12, 1991 Sheet 4
Page 61 and 62:
1ACCELERATOR PEDAL ASSEMBLYTECHNICA
Page 63 and 64:
565,063,811FIG. 1 to the wide-open-
Page 65 and 66:
5,063,811910'above, the uppermeans-
Page 67 and 68:
"..._.. .~ --"N~Applicant:EngelgauS
Page 69 and 70:
, .Applicant: EngelgauSN: 09/643,42
Page 71 and 72:
-,.J.."(". ,to . ) , PTO/SS/26 (10-
Page 73 and 74:
5The subject inventionADJUSTABLE PE
Page 75 and 76:
S 3 'as set fort in clai l wherein
Page 77 and 78:
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Page 79 and 80:
--,.ApplicationOfficë Action Summa
Page 81 and 82:
Serial Number: 09/236,975Page 3Ar U
Page 83 and 84:
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Page 85 and 86:
",U.S.S.N 09/236,975 2..,. .~-,!.,0
Page 87 and 88:
US.S.N 09/236,975 4aft directions t
Page 89 and 90:
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Page 91 and 92:
Form PTO-1449 U.S. DEPARTMENT OF AT
Page 93 and 94:
L-Sheet -i of -i ==.5FORM l'O.1449
Page 95 and 96:
Sheet -- of -l.. b ~~ C'~ §g.' l:
Page 97:
DECLARATION OF JAMES w: DABNEY and
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Reply Brief in Support of KSR's Motion for Summary ... - Fried Frank

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