MEMORANDUM OPINION
Plаintiff Hitachi Koki USA, Ltd. (“Hitachi”) seeks review under 35 U.S.C. § 145 of the denial by the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences (“Board”) of Hitachi’s application for a patent for its
BACKGROUND
On January 20, 1995, the United States Patent and Trademark Office (“PTO”) issued U.S. Patent Number 5,425,294 (“the '294 patent” or “the Hitachi patent”) to Hitachi, as assignee of named inventors Shigeharu Ushiwata and Ryuichi Imamura, for a “desk-top cutting machine with tiltable saw.” (See Trial Joint Exhibit [“Jt. Ex.”] 1 at 1.) This saw is depicted in the '294 patent in the following drawings, among others:
[[Image here]]
(See id.) The saw assembly is mounted atop a pivot point, so that the user pushes the saw downward in order to cut into the workpiece, which rests on a turntable that is part of the saw’s base. The Hitachi device can be used to make (1) “miter” cuts, where the user first rotates the workpiece in the turntable and then cuts with the blade in a “zero-tilt” position perpendicular to the workpiece surface; (2) “bevel” cuts, where the workpiece is nоt rotated but the saw is tilted downward to the left or right from zero-tilt before cutting, so that the blade will intersect the workpiece surface at an acute angle; and (3) “compound” cuts, where the user both rotates the workpiece and tilts the saw assembly before making the cut. (See Jt. Ex. 11 (Decl. of Paul Hatch [“Hatch Decl.”]) at 3-4 ¶ 7.) Devices that can make bevel cuts in one direction are known as “single-bevel” miter saws, while those (like Hitachi’s) that can make bevel cuts in both directions are known as “dual-bevel” miter saws. (Id. at 4 ¶ 8.) Workpieces whose ends have been cut at a 45° angle can be fit together to form right-angled corners.
On June 20, 1997, pursuant to 35 U.S.C. § 251, Hitachi voluntarily surrendered the '294 patent and filed Reissue Application 08/879,517 (“the '517 application”), adding a number of patent claims. Reissue applications are examined in the same manner as newly submitted applications and are thus subject to the same requirements that govern newly submitted applications. See 37 C.F.R. § 1.176(a). After reviewing Hitachi’s reissue application, the PTO Examiner (“Examiner”) denied Claim 1, among others, as obvious under 35 U.S.C. § 103(a) and therefore not unpatentable. (See Jt. Ex. 4 (Feb. 2, 2005 PTO Final Office Action) [“Examiner’s Decision”] at 2.) Plaintiff appealed to the Board but requested review only of Claim 1, leaving that as the sole claim at issue in this case. (Jt. Ex. 2 (Oct. 19, 2006 Board Decision on Appeal) [“Board’s Decision”] at 3 (“For the convenience of the Board, Appellant will аrgue the patentability of independent claim 1. The other claims stand or fall together with claim 1.” (quoting Hitachi’s brief)).)
Claim 1 consists of eight elements (hereinafter, “Element 1” through “Element 8”) and reads as follows, with numbers added for ease of reference:
A desk-top cutting machine, comprising:
(1) a base on which a workpiece to be cut is supported, said base including a top surface;
(2) a turntable rotatably disposed in said base and including a top surface;
(3) a holder supported by said turntable for tilting transversely in opposite directions about a zero-tilt angle position;
(4) a circular saw blade;
(5) a saw shaft located above said holder for supporting said saw so that saidsaw is swung up and down relative to said base, about a pivot shaft;
(6) a circular saw assembly having a motor covered by a housing;
(7) a motor shaft of said motor being disposed in parallel with and above said saw shaft;
(8) transmission means through which said motor shaft is connected to said saw shaft so that an axis of said motor shaft is shifted from an axis of said saw shaft by a distance which is greater than or equal to the radius of said circular saw blade, wherein when said holder is tilted in either of said opposite directions by an angle greater than or equal to 45 degrees with respect to the zero-tilt angle position, said housing does not contact said top surface of said base.
(Jt. Ex. 1 at 9.)
The Board affirmed the denial of Claim 1 in light of five prior art references. (See Board’s Decision at 12.) The first referеnce was what Hitachi’s application recognized as prior art (“Applicant’s Admitted Prior Art” or “AAPA”), as depicted in Figures 6 and 7 of the '294 patent and disclosed in lines 11 through 33 of column 1 of the patent specification. (Jt. Ex. 1 at 4 (figs. 6 & 7), 8.) Resembling a conventional single-bevel desktop miter saw, the motor shaft of the AAPA is “disposed in parallel with” the saw shaft and connected through “toothed engagement,” so that the motor projects perpendicularly from one side of the saw assembly, near the center of the blade:
[[Image here]]
(Id.)
The second reference discussed was U.S. Patent No. 5,357,834 (filed May 18, 1993), issued to Ito et al. (“Ito”) on October 25, 1994. Ito discloses a dual-bevel desktop miter saw whose motor shaft projects upward at an angle from the center of saw blade and transmits power to the saw shaft using beveled gears:
[[Image here]]
(See Jt. Ex. 7 at 1.)
The third reference was U.S. Patent No. 4,574,670, issued in 1986 to Johnson (“Johnson”). The patent describes a “multiple angle cutting apparatus” and features a motorized saw blade mounted on a positioning mechanism that can rotate and tilt:
(See Jt. Ex. 8 at 1.)
The fourth reference was U.S. Patent No. 1,417,669, issued in 1922 to Langworthy (“Langworthy”), which describes a motorized surgical saw:
[[Image here]]
(See Jt. Ex. 9 at 1.)
The fifth reference was U.S. Patent No. 3,013,592, issued in 1961 to Ambrosio et al. (“Ambrosio”), which describes a “tilting table saw” featuring a motorized blade mounted underneath the cutting surface:
(See Jt. Ex. 10 at 1.)
The Board also discussed a sixth reference, Japanese Utility Model Application (OPI) No. 49901/88 (“JPN '901”) (also known as Jаpanese Laid-Open Utility Model Publication No. 63-49901), which both the '294 patent and Ito “recognized [as] prior art designs.” (Board’s Decision at 20; see Jt. Ex. 1 at 8 (col. 1 11. 35-36); Jt. Ex. 7 at 11 (col. 1 11. 17-20).) JPN '901, a dual-bevel miter saw that was also designed by Ushiwata, permits unobstructed 45° bevel cuts in both directions by moving the motor shaft upward from and perpendicular to the saw shaft, such that the motor shaft is parallel to the saw blade:
(See Jt. Ex. 13 (Decl. of Shigeharu Ushiwata [“Ushiwata Decl.”]) ¶ 15; id., Ex. D at 9.)
The Board found that Ito and the AAPA described every aspect of the desktop cutting machine defined in Claim 1 of the Hitachi patent except for Elements 7 and 8. 1 (See Board’s Decision at 12-13.) The Board then considered what a person of ordinary skill in the art would have learned from the combined teachings of either the AAPA or Ito, coupled with Johnson, Ambrosio, and Langworthy. (Id. at 14-15.)
First, the Board concluded that both the AAPA and Ito’s discussion of prior art would have taught an ordinarily skilled person that the conventional single-bevel saw assembly would prevent users from making cuts at 45° to either side of “zero-tilt,” because on one side, the motor housing would hit the surface of the workpiece or base, thus requiring a user to rotate the workpiece 180° in order to make a bevel cut in the opposite direction.
(See
Board’s Decision at 15.) Next, an ordinarily skilled person would recognize that Ito’s solution to that problem requires turning the motor shaft upwards at an angle to the saw shaft and transmitting power to the saw shaft through angled beveled gears.
(Id.)
In addition, the hypothetical person of
The Board then determined that Johnson teaches that a cutting machine whose motor shaft is parallel to the saw shaft could be used to make ±45° bevel cuts without hitting the workpiece or base and without rotating the workpiece. (Board’s Decision at 16.) The Board next considered Langworthy and found that it also disclosed parallel motor and saw shafts that were connected by transmission means and displaced by a least one blade radius. {Id. at 18.) Although Langworthy is a handheld surgical saw, it was found to teach that “[t]he saw may be of various sizes, [and the guard is also made in various sizes] complementary to the saw ... and these elements may be changed at will, to adapt them for different uses,” and that the arm connecting the saw and motor could be manipulated “to attain cuts at various angles ... with facility and accuracy in the operations.” {Id. at 19 (quoting Jt. Ex. 9 at 3 (col. 3 11. 49-53, col. 4 11. 69-74)).) The Board also found that although Langworthy did not possess a base or other workpiece support, an ordinarily skilled person would have understood the human body to be Langworthy’s “workpiece,” and that because it would not be feasible or desirable to manipulate the patient’s body, the ability to make angled cuts would depend upon the ability to change the angle of the saw without obstruction by the body. {Id. at 17, 19.) Finally, the Board determined that Ambrosio similarly would have taught a person of ordinary skill that unobstructed ±45° bevel cuts could be made without rotating the workpiece if the motor and saw shafts were parallel and displaced by at least one blade radius. {Id. at 19-20.) The Board found that “[i]n light of the combined prior art teachings, ... persons having ordinary skill in the art would have had the instruction and the motivation to make and use a desk-top cutting machine having the design and/or construction claimed.” {Id. at 20.) Accordingly, the Board affirmed the Examiner’s rejection of Claim 1 as obvious and unpatentable. {Id. at 24.)
On December 15, 2006, plaintiff requested rehearing, arguing that the Board misunderstood the teachings of Johnson with respect to its bevel-cutting capabilities and that Langworthy and Ambrosio were not analogous art.
{See
Jt. Ex. 15 (Hitachi’s Req. for Reh’g) at 1-4.) On June 21, 2007, the Board denied rehearing and emphasized that the rejection of Claim 1 was consistent with the Supreme Court’s intervening decision in
KSR International Co. v. Teleflex Inc.,
The Court then conducted a bench trial on April 23 and 24, 2009. Át the outset, the Court permitted Hitachi to introduce new evidence of the secondary consideration of “long-felt but unsolved need,” denying defendant’s motion to strike such evidence on the grounds that the issue had been expressly considered by the PTO. (See Examiner’s Decision at 10 (“Applicant argues that motivation to pivot 45° both ways was known for years and yet the only solution was the overly expensive Ito '834, and therefore] the current solution is unobvious. However, Applicant has not proven this to be a longstanding рroblem that others (different assignees) have failed at.”).) The Court then heard testimony from three witnesses. 2 Plaintiffs witness Gary Katz, an expert in the field of finish carpentry, 3 testified that the Hitachi design met a long-felt need among carpenters, because it enabled them to make bevel cuts in opposite directions on a workpiece without having to “helicopter” it (i.e., rotate it 180°) or flip it over onto its face. (See generally Trial Tr. [“Tr.”] at 24-70, 339 — 41; Jt. Ex. 12 (Decl. of Gary Katz [“Katz Deck”]) ¶ 10.) Plaintiffs witness Paul Hatch, an expert in the field of power tool design, testified about the prior state of the art with respect to miter saws, the features of the Hitachi invention, the teachings of the relevant prior art references, and the fact that a person of ordinary skill in the art would have had no reason to combine those teachings. (See generally Tr. at 72-190, 342-52.) Defendant’s witness Michael Gililland, an expert in the field of power tool design, offered testimony rebutting Hatch and Katz, expounding upon the teachings of the prior art and explaining that an ordinarily skilled person would have had sufficient reason to combine those teachings. (See generally id. at 220-339.)
Applying the legal standards set forth below to this evidence and to the record before the Board, and considering the arguments and pleadings of counsel, the Court makes the following findings of fact and conclusions of law:
ANALYSIS
I. LEGAL STANDARDS
A. Judicial Review Under 35 U.S.C. § 145
“A patent applicant may challenge a decision of the Board by either appealing directly to the United States Court of Apрeals for the Federal Circuit, by way of 35 U.S.C. § 141, or by filing a civil action to obtain a patent in’ the United States District Court for the District of Columbia, by way of 35 U.S.C. § 145.”
Putman v. Dudas,
An action under § 145 is a hybrid of an appeal and a
trial de novo. Hitachi I,
Hеre, Hitachi’s new evidence challenges the Board’s obviousness determination. “Obviousness is a question of law with underpinning factual findings.”
Mazzari,
B. “Obviousness” Under 35 U.S.C. § 103(a)
“[T]he federal patent power stems from a specific constitutional provision which authorizes the Congress ‘To promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries.’ ”
Graham v. John Deere Co. of Kansas City,
In 1952, Congress codified this criterion in 35 U.S.C. § 103, which requires that patentable subject matter be “non-obvious.” The statute now provides that “[a] patent may not be obtained ... 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 said subject matter pertains.” 35 U.S.C. § 103(a). The non-obviousness requirement “creates a ‘patent-free’ zone around the state of the art, allowing skilled technicians to complete routine work such as the straightforward substitution of materials, the ordinary streamlining of parts and technical processes, and the usual marginal improvements which occur as a technology matures.” Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks § 17.1 (2003).
“Ultimately, the question to be determined by this Court is whether the claimed invention can be said to have been obvious to one of ordinary skill in the art.”
Radix,
To determine obviousness, the Court must examine (1) the level of ordinary skill in the pertinent art, (2) the scope and content of the prior art, (3) the differences between the prior art and the claims at issue, and (4) whether any “secondary considerations” such as “commercial success, long felt but unsolved needs, [or] failure of others” might provide objective evidence of non-obviousness by shedding light upon “the circumstances surrounding the origin of the subject matter sought to be patented.”
KSR,
II. FINDINGS OF FACT
A. The Level of Ordinary Skill in the Pertinent Art
At the time Hitachi’s invention was made, a person of ordinary skill in the art would have been either a mechanical engineer (or equivalent) having at least 5 years of experience designing power tools, or someone having technical training and 10 years of experience designing power tools. The parties are in substantial agreement as to this definition. (See Ushiwata Decl. ¶ 9 (offering this definition); Jt. Ex. 17 (Decl. of Michael Gililland [“Gililland Decl.”]) ¶ 10 (embracing Ushiwata’s definition); see also Hatch Decl. at 5 ¶ 12 (proposing similar definition).)
B. The Scope of the Prior Art
The scope of the prior art encompasses those references that are “analogous to the claimed invention.”
In re Bigio,
1. The AAPA and Ito are prior art.
By definition, the AAPA is the '294 patentee’s own proffer of prior art. (See also Tr. at 119:12-25 (Hatch).) Hitachi’s counsel also acknowledged that Ito is prior art. (See id. at 356:10-13.)
2. Johnson and Ambrosio are prior аrt because they are from the same field of endeavor as Hitachi’s device.
The '294 patent describes the “[f]ield of the [i]nvention” as relating to “a desk-top cutting machine whose saw can be tilted rightward and leftward relative to the top of the base of the machine.” (Jt. Ex. 1 at 8 (col. 1 11. 6-9).) However, the patentee’s narrow view of the relevant field does not necessarily define the prior art’s scope. The field of endeavor can be correctly determined “by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art” with “reference to explanations of the invention’s subject matter in the patent application .... ”
Bigio,
In light of the Hitachi device’s structure and function, the Court finds that “[e]ommon sense” would have guided the ordinarily skilled person to consider other tiltable motorized devices used to cut construction materials and to “fit [their] teachings ... together like pieces of a puzzle.”
KSR,
3. Langworthy is prior art because it is reasonably pertinent to the particular problems addressed by Hitachi’s device.
“A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.”
In re ICON Health and Fitness, Inc.,
The Court finds that “given the nature of the problems confronted by the inventor[ ] [of Hitachi’s device], one of ordinarily skill in the art would have consulted the mechanical arts for” motorized circular saw assemblies more generally.
Paulsen,
Langworthy evinces a similar concern for displacing the motor shaft from the saw shaft in order to maximize the “accuracy and precision” of potential styles and angles of cuts.
(See
Jt. Ex. 9 at 2 (col. 111. 9-30).) Langworthy’s “primary object” is to be “comparatively simple in construction and operation and composed of a minimum number of parts .... ” (Id.;
see also
Tr. at 329:25-330:4 (Gililland).) Langworthy’s saw assembly consists of a sterilizable blade and saw shaft fixed to one end of a flat tubular arm that encases the transmission means; the other end of the arm is attached to (and can detach from) the motor, which is unsterilized but can be covered in a sterilized bag. (Jt. Ex. 9 at 2-3 (col. 2 1. 70-col. 3 1. 20).) Because the arm displaсes the motor shaft from the saw shaft, the user can hold the arm and wield the device to “attain cuts at various angles ... with facility and accuracy in the operations.”
(Id.
at 3 (col. 4 11. 69-74).) Langworthy thus falls within “[t]he scope of the prior art” because its parallel but displaced shafts and simplified transmission system are “ ‘reasonably pertinent to the particular problem with which [Hitachi’s] invention was involved.’ ”
Ruiz v. A.B. Chance Co.,
“The prior art is relevant for all it contains, including what it fairly suggests to one of ordinary skill in the art.”
Markman v. Lehman,
1. The AAPA
As described in the '294 patent, the AAPA is a “conventional desk-top cutting machine” with a circular saw assembly whose shaft is connected “through toothed engagement” to and “disposed in parallel with” the motor shaft, such that the motor projects out from the center of the blade. (See Jt. Ex. 1 at 5 (figs. 6 & 7), 8 (col. 111. 11-33).) The saw assembly is mounted on a holder, which is in turn attached to a base that supports the workpiece to be cut. (See id.) The AAPA teaches that while the holder can be tilted leftward in order to make “left-hand” bevel cuts at a 45° angle, the structure of the saw assembly only permits a rightward 20° or 30° tilt, at which point the motor housing would hit the base. (See id.; see also Pl.’s Dec. 22, 2008 Statement of Material Facts [“Pl.’s Pretrial Facts”] [Dkt. No. 35] ¶ 10 (“The AAPA saw is not capable of making ±45° bevel cuts[;] instead the AAPA, when ti[lt]ed in the clockwise direction, can only move 20 or 30 degrees.”).) In order to obtain 45° cuts in opposite directions, the workpiece must be rotated. (Jt. Ex. 1 at 8.)
The Court finds that the Hitachi patent’s own description and depictions of the AAPA in Figures 6 and 7 demonstrate that the patentee viewed the AAPA as teaching Element 1 (a base supporting a workpiece), Element 2 (a turntable within the base),
7
Element 3 (a holder supported by the turntable for tilting in opposite directions),
8
Element 4 (a circular saw
2. Ito
Ito discloses а desktop miter saw that can tilt 45° in opposite directions to make bevel cuts. (See Jt. Ex. 7 at 14-15 (Claims).) Like the AAPA, Ito claims a saw assembly attached to a tiltable holder, which is in turn attached to a base that supports the workpiece. (See Jt. Ex. 7 at 5 (fig. 4), 11-12.) That base contains a turntable so the user can rotate the workpiece for miter cuts. (See id. at 11.) Ito’s motor is turned upward at a 45° angle relative to the saw blade and transmits power to the saw shaft through beveled gears, permitting unobstructed 45° bevel cuts in both directions. (Id. at 14-15.) Ito thus teaches that it is possible to achieve 45° bevel cuts in both directions by moving the motor shaft upward from the base so that it will not abut the workpiece or base when the saw is tilted.
In addition, Ito teaches that when moving the motor shaft upward, it is not desirable to place the motor shaft perpendicular to the saw shaft in the manner of JPN '901. Ito cites JPN '901 as prior art and discusses how JPN '901 permits unobstructed dual-beveling by raising the motor shaft “laterally and upwardly” out of the way of the saw blade, so that the motor shaft is perpendicular to the saw shaft (and thus parallel to the saw blade). (Jt. Ex. 7 at 11 (col. 1 11. 17-31).) Ito concludes that JPN '901’s design is non-optimal because it employs a “multistage” gear train to transmit power to the saw shaft, which increases the complexity, cost, and size of the saw. (Id.)
The Court credits Gililland’s testimony that Ito teaches Elements 1, 2, 3, 4, 5, and 6 of Claim 1 of the '294 patent, as well as those portions of Element 8 that describe both a means of transmission between the motor and saw shafts and the ability to tilt 45° in either direction without obstruction. (See Tr. at 258:8-262:5; see also Pl.’s Pretrial Facts ¶ 11 (“The saw disclosed in Ito is already capable of making ±45° bevel cuts.”).)
3. Johnson
Johnson discloses a multiple-angle cutting machine that computerizes the process of cutting and shaping the ends of “extrusions,” such as tubing, that are automatically fed into cutting position by means of a “stock feed and orienting mech
The shaft of Johnson’s circular saw is connected by drive train to a motor shaft placed in parallel with and above the saw shaft. (See Jt. Ex. 8 at 2 (fig. 1), 17 (col. 5 11. 52-55); see also Tr. at 266:22-25 (Gililland); Hatch Decl. at 8-10 (recreating Johnson’s saw assembly structure in CAD diagram); Pl.’s Ex. 19 (CAD presentation).) The saw assembly rests at the end of a horizontal hydraulic arm which is itself mounted atop a vertical hydraulic arm; unlike Hitachi’s saw, which pivots downward when cutting, Johnson’s saw moves into cutting position through the contraction or expansion of the hydraulic arms. (See Jt. Ex. 8 at 17 (col. 5 11. 49-59).) These hydraulic arms are part of a “cutting member positioning mechanism” that can rotate and tilt the saw in arcs centered on a single “point of cut.” (Id. (col. 5 11. 60-68).) The “angular orientation of the cutting member” is “selectably controllable” by a motor that can, among other things, “rotate [the] cutting member” around “a horizontal center line which passes through the point of cut.” (Id.) This would move the saw along a semicircular track that defines the “vertieal-tiltable travel path,” corresponding to the tilting capability necessary for bevel cuts. (Id. at 15 (col. 2 11. 5-6); see also Gililland Decl. ¶ 24.) Although the workpiece handling mechanism can also rotate the workpiece to achieve finer adjustments to the miter-cutting capability (see Jt. Ex. 8 at 18 (col. 7 11. 4-12)), the saw assembly’s positioning mechanism is the only structure capable of tilting for bevel cuts. (See id. at 3 (figs. 2 & 3 (showing angle B)); Hatch Decl. at 10 ¶ 1 (“[0]nly axis \i.e., angle] B refers directly to beveling.”).)
Hitachi did not appear to dispute that Johnson teaches the ability to tilt the saw assembly 45° in either direction. The text speaks generally about the “±45° capability of the cutting member positioning mechanism” (Jt. Ex. 8 at 17 (col. 5 11. 14-15); see also id. at 18 (col. 711.11-12)), and it repeatedly describes the ability to tilt the saw without any reference to limits upon that ability. (See id. at 1 (Abstract), 15 (col. 2 11. 5-6), 16 (col. 4 11. 56-64), Í7 (col. 5 11. 61-65), 19 (Claims).) Hatch conceded that “there is plenty of room” for Johnson’s saw assembly to tilt in either direction. (See Tr. at 186:18-187:1; see also Hatch Decl. at 10 ¶ 2.)
However,- the parties disputed whether Johnson teaches the ability to
cut
while tilted 45° in either direction. The Court finds that-Johnson so teaches. The Court credits Gililland’s testimony that despite the text’s reference to the ±45° positioning capability during a broader discussion of miter rotation, the patent makes no distinction in how it describes and depicts the mitering and beveling angles of rotation and their related structures.
(See
Tr. at 272:7-10 (“[Johnson] uses the same language to describe the rotation about the axes [i.e., angles] B [bevel] and C [miter]. And he demonstrates in his drawings the same kinds of structure. So, I don’t read any limitation on the bevel angle that’s not there for the miter angle.”);
id.
at 317:24-318:12.) For example, Figure 1 depicts the semicircular track that defines the “vertical-tiltable travel path” for bevel cutting as Item 49, and that structure extends in both directions from the saw’s zero-tilt position.
(See
Jt. Ex. 8 at 2 (fig. 1), ■ 17
Plaintiff relies upon Hatch’s testimony and his CAD presentation to show that even though Johnson’s saw can tilt to make “left-hand” 45° bevel cuts, it cannot make cuts when tilted 45° in the other direction.
(See
Hatch Decl. at 10 ¶ 2.) The Court is not persuaded. First, Hatch contends that the saw’s “gear and belt housing” — ie., the housing for what the patent calls the “drive train” — “is far too large on the right hand side” to permit “right-hand” 45° bevel cuts, and that it would hit the workpiece or its handling mechanism when attempting to cut from a 45° rightward tilt.
(Id.-, see also
Tr. at 186:11-187:8.) However, this conclusion about the relative sizes of the drive train’s housing, the saw blade, and the workpiece handling mechanism lacks a reliable basis in the patent. The specification discusses Johnson’s drive train only once in passing
(see
Jt. Ex. 8 at 17 (col. 5 1. 53)), and Hatch’s conclusion аbout the scale of the elements was “solely based on [Figure l’s] image alone.” (Tr. at 182:15.) Yet it is improper — and potentially “misleading”
(id.
at 137:19-20 (Hatch)) — to infer scale solely from the patent’s illustrations, because “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if,” as here, “the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Group Int’l., Inc.,
Second, Hitachi contends that Johnson’s
ability
to rotate a workpiece 180° by means of the handling mechanism is evidence of Johnson’s need to rotate the workpiece because it cannot tilt the saw 45° in both directions. (See Tr. at 380:3-4 (Hitachi’s counsel: “Whatever Johnson was trying to do with his device, he also had a flipping problem.”).) However, plaintiff assumes without basis that the handling mechanism’s rotational function is “an automated helicoptering system”
(see id.
at 380:4-13), referring to the “helicoptering” or “whirly-birding” workaround developed by users of single-bevel desktop saws to make bevel cuts in opposite directions.
(See id.
at 39:9-15 (Katz).) Just because users of a single-bevel desktop miter saw must rotate the workpiece, it does not necessarily follow that Johnson must be a single-bevel device simply beсause it enables workpiece rotation.
(See
Jt. Ex. 8 at 2 (fig. 1, item 15), 18 (col. 8 11. 40-42).) Rather, the handling mechanism’s function should be understood in light of Johnson’s intended purpose: to automate and consolidate the process of feeding and cutting the
ends
of workpieces
(id.
at 15 (col. 1 11. 5-11)), which was previously handled by different machines at different times.
(Id.
(col. 1 11. 14-41).) Because Johnson’s saw is designed to rotate and tilt around a single point of cut, it is necessary to move both ends of each workpiece to that point in order to cut them. First, the handling mechanism receives each new piece of stock as it is fed into the machine, clamps the workpiece
However, even if plaintiff were correct that the size of Johnson’s saw assembly elements relative to the handling mechanism would not permit right-hand 45° bevel cuts, Johnson’s teachings are not limited to “the specific embodiment recited.”
Fracalossi,
Turning to the specific elements of Claim 1 of the '294 patent, the Court finds that Johnson describes Element 1 insofar as it possesses a mechanism that supports the workpiece in the manner of a “base.” The Court also credits Gililland’s testimony that Johnson teaches those portions of Element 3 that describe a structure that can tilt the saw assembly “transversely in opposite directiоns about a zero-tilt angle position” (see Tr. at 276:2-7), as well as Element 4, a circular saw blade, Element 6, a saw assembly with a covered motor, and Element 7, a motor shaft parallel to and above the saw shaft. (Id. at 276:2-3; see Jt. Ex. 8 at 2 (fig. 1, items 41 & 43), 17 (col. 5 11. 53-55).) Finally, the Court credits Gililland’s testimony that Johnson teaches those portions of Element 8 which describe the displacement of the motor and saw shafts by at least one blade radius and their connection by transmission means, and which describe the saw assembly’s placement on a structure that permits tilting 45° in either direction without obstruction. (See Tr. at 266:22-267:2, 270:17-24, 275:10-20.)
4. Ambrosio
Ambrosio discloses a tilting table saw with a “new and improved means for varying the angular position of the saw blade relative to the work supportable table.” (Jt. Ex. 10 at 4 (col. 1 11. 8-11).) The motorized circular saw assembly is mounted underneath the table, with the blade fitting through a slot running through the center of the table’s length.
(See id.
at 1 (fig. 1), 4 (col. 1 11. 62-72).) A pulley transmission connects the saw shaft to a motor shaft that is placed parallel to and below the saw shaft.
(See id.
at 1, 4 (col. 2 11. 31-39).) The saw can be tilted to either side of its zero-tilt position, although the text does not specify the precise angle.
(See id.
at 2 (fig. 3, item 76), 5 (col. 3 11. 53-
With respect to Claim 1 of the '294 patent, the Court finds that Ambrosio teaches Element 1 because it claims a “base, [and] a horizontal work-supporting table fixed to said base” (Jt. Ex. 10 at 5 (col. 4 11. 22-23)), and those portions of Element 3 which describe a means for tilting the saw “transversely in opposite directions.” (See Tr. at 288-89, 330:24-25 (Gililland).) Ambrosio also teaches Elements 4 and 6, because it possesses a circular saw assembly with a motor housing, and Element 7, to the extent that the motor and saw shafts are parallel and the saw shaft is interposed between the motor shaft and the cutting surface. (See Jt. Ex. 10 at 4 (col. 2 11. 31-39)); Tr. at 291:2-10 (Gililland); cf. id. at 144:13-14 (Hatch’s testimony that Ambrosio “has a few of these elements, but not all”). Although Element 7 specifies that the motor shaft is above the saw shaft, Gililland persuasively explained that the term “above” should be understood in the context of a desktop saw, where the saw assembly is mounted over the cutting surface, such that a motor shaft “above” and parallel to the saw shaft simply means that the saw shaft is interposed between the motor shaft and the cutting surface. (Tr. at 291:11-17.) Where, as with Ambrosio’s table saw, the saw assembly is mounted below the cutting surface but its saw shaft is similarly interposed between the motor shaft and cutting surface, the Court finds that a person of ordinary skill would know to simply “flip everything upside down” for use in a desktop device. (Id.) Finally, the Court credits Gililland’s testimony that Ambrosio teaches those portions of Element 8 that describe how the motor and saw shafts are displaced by at least one blade radius and connected by transmission means, permitting the user to make unobstructed bevel cuts in eithеr direction. 12 (Id. at 290:1-8; 294:14.)
5. Langworthy
As discussed,
see supra
Section 11(B)(3), Langworthy discloses a motorized surgical saw that can be used to make a variety of cuts at various angles.
(See generally
Jt. Ex. 9 at 2-3.) It also teaches that the placement of the motor and saw shafts in parallel with each other, and their connection through transmission means, requires “a minimum number of parts” and permits “comparatively simple [] construction and operation ....”
(Id.
at 2 (col. 1 11. 15-20).) With respect to Claim 1 of the Hitachi patent, Langworthy teaches Elements 4 and 6, a motorized circular saw assembly with a motor housing. The Court also finds that it teaches those portions of Element 7 and 8 that describe parallel motor and saw shafts, displaced by at least one blade radius and connected by transmission means, which permit the user to make unobstructed cuts at various angles relative to the
workpiece
— i.e., the patient’s
D. Differences Between the Prior Art and the Claims at Issue
The prior art collectively teaches every element of Claim 1 of the '294 patent. Although no reference alone teaches the ability to make dual-bevel cuts with a parallel-shaft saw assembly mounted on a downward pivot, it is not necessary for any single reference to anticipate every element of Claim 1, because “the need to determine obviousness presumes anticipation is lacking.”
Connell v. Sears, Roebuck & Co.,
1.The AAPA
As both parties agree, the AAPA does not teach Element 8 of Claim 1 of the Hitachi рatent. (See Tr. at 122:9-123:1 (Hatch); id. at 251:21-22 (Gililland).)
2.Ito
Because the axes of Ito’s motor and saw shafts intersect at an acute angle, Ito does not teach Element 7’s parallel shaft structure, nor does it teach those portions of Element 8 regarding the shafts’ displacement.
3.Johnson
Johnson does not teach Element 2, a turntable rotatably disposed in the machine’s work-supporting base, nor does it teach the portion of Element 3 referring to the fact that the turntable supports the structure that permits tilting. (See Tr. at 136:8-21 (Hatch).) In addition, because Johnson’s saw assembly is mounted on hydraulic arms that are part of the positioning mechanism, Johnson does not teach Element 5, which describes a holder that supports the saw assembly and contains a pivot shaft about which the saw can swing downwards into the workpiece. And because the Court has seen nothing to suggest that Johnson’s saw could tilt more than 45° in any direction, the Court finds that Johnson does not teach those portions of Element 8 that discuss the ability to tilt at an angle “greater than” 45 degrees.
4.Ambrosio
Like Johnson, Ambrosio does not teach Element 2, the portion of Element 3 referring to the turntable’s support of the tilting structure, or the portion of Element 5 describing a pivot shaft for the saw assembly. (See also Tr. at 331:7-332:1 (Gililland).) And, as discussed, Ambrosio does not actually teach all of Element 7 because the motor shaft is below the saw shaft, although this is not a material difference. See supra Section 11(C)(4). Finally, Ambrosio does not teach a specific bevel-cutting angle, and therefore does not teach Element 8’s reference to “an angle greater than or equal to 45 degrees.” (See Tr. at 144:1-2 (Hatch); id. at 330:21-25 (Gililland).)
5.Langworthy
Langworthy is a handheld device, so it does not teach Element 1, a base supporting the workpiece. Like Johnson and Ambrosio, it does not teach Elements 2, 3, or 5, because it lacks a turntable, a holder that permits tilting, and a pivot shaft. And because the device’s orientation is not fixed in space nor is the saw shaft’s location fixed relative to a cutting surface, Langworthy does not teach those portions of Element 7 that refer to a motor shaft “above” the saw shaft, or those portions of Element 8 that refer to the ability to tilt 45° relative to a “zero-tilt angle position.” (See generally Tr. at 139:23-142:4 (Hatch).)
E. A Reason to Combine the Elements
“[A]ny 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.”
KSR,
550
Applying these guiding principles, the Court finds that at the time this saw was invented, there was a recognized design need given the limitations of both the AAPA and Ito, there were a finite number of predictable solutions, the saw assembly designs of Johnson, Ambrosio, and Lang-worthy were known options within the ordinarily skilled person’s technical grasp, and there was therefore a good reason to combine those references’ saw assembly designs with the AAPA or Ito.
1. Combining the AAPA with Johnson, Ambrosio, or Langworthy
The '294 patent describes a desire to improve upon the AAPA’s “very low” efficiency by redesigning the saw assembly to move the motor so it would not hit the base when tilting the saw 45° in either direction. (Jt. Ex. 1 at 8 (col. 111. 19-33).) Ito voiced similar concerns about the conventional single-bevel design.
(See
Jt. Ex. 7 at 11 (col. 11-17).) Ushiwata also testified that “as of 1992, there had been an industry desire for a desktop miter saw able to pivot 45° in either direction to make bevel cuts.” (Ushiwata Decl. ¶ 10.) Given Ushiwata and Ito’s independent recognition that the state of the art was inadequate, the Court finds that at the time the Hitachi device was made, the ordinarily skilled person would also have perceived “a design need or market pressure” that would have furnished sufficient reason to consider altering the AAPA’s saw assembly.
KSR,
The AAPA’s saw assembly’s defining features are (i) its parallel motor and saw shafts and (ii) the motor shaft’s direct connection with and transmission of power to the saw shaft through toothed engagement. The hypothetical inventor could have tried to re-orient the motor shaft so it was no longer parallel to the saw shaft, while keeping the shafts in direct contact through toothed engagement. Re-orienting the motor shaft to an acute angle relative to the saw shaft would have led to a design like Ito’s, and re-orienting it so it was perpendicular to the saw shaft would have led to a “single-stage” version of the JPN '901 design (if one were possible). The record shows that both such orientations in Ito and JPN '901 require beveled gears.
13
Because Ushiwata criticized the
2. Combining Ito with Johnson, Ambrosio, or Langworthy
The evidence presented also demonstrates that the ordinarily skilled person would have had reason to improve upon Ito. 14 First, Ito uses beveled gears to transmit power from the motor to the saw. (See Jt. Ex. 7 at 13 (col. 6 11. 22-26), 15 (Claims)); (see also Tr. at 153:6 (Hatch).) As discussed, the use of beveled gears was criticized by Ushiwata, Katz, and Gililland. Second, Katz testified that the off-center placement of Ito’s angled motor creates a weight imbalance that makes it “difficult to dial in a bevel angle precisely” when the user tilts the saw to the side where the motor is. (Tr. at 54:13-21.) The Court finds that the ordinarily skilled person would have been aware of these shortcomings. That hypothetical inventor would therefore have had reason to imрrove upon Ito by redesigning its saw assembly and looking to the prior art for instruction on how to do so. Just as with the AAPA, the hypothetical inventor would consider the finite number of alternatives to Ito’s angled motor and beveled gear transmission and find it obvious to try the parallel shaft structure and transmission means taught by Johnson, Ambrosio, and Langworthy.
F. Secondary Considerations
Hitachi has asserted that the '294 patent was not obvious in light of objective evidence that its design filled a long-felt but unsolved need in the industry for a dual-bevel desktop miter saw.
(See, e.g.,
Hatch Decl. at 1 ¶ 1; Katz Decl. ¶ 1; Tr. at 56:18-19 (Katz).) Hitachi has also argued that JPN '901 is evidence of a failed attempt to satisfy that need and further weighs in favor of the '294 patent’s non-obviousness.
(See, e.g.,
Tr. at 202:23-203:7 (Hitachi’s counsel).) Although the issue of “failure of others” is sometimes viewed as distinct from the issue of “long-felt need but unsolved need,” they are complementary considerations,
see
Schechter
&
Thom
The mere existence of a market demand or design need at the time the invention was made cannot, alone, constitute evidence of non-obviousness, because “design incentives and other market forces” can in fact prompt
obvious
variations of existing inventions.
KSR,
Hitachi established that the first single-bevel miter saws became widely available in the United States in 1985 or 1986. (Tr. at 34:16-17 (Katz).) The single-bevel saw’s limitations were immediately evident to finish carpenters working in compact workspaces. (Tr. at 35:5-12, 48:8-12 (Katz);
see also
Ushiwata Decl. ¶¶ 11-12.) In order to make left-hand and right-hand bevel cuts into a workpiece using a single-bevel saw, one must either “helicopter” the workpiece or flip it over.
(See
Tr. at 39:9-15 (Katz); Ushiwata Deck ¶¶ 13-14.) Both methods have their limitations: helicoptering becomes less convenient as the width of the workspace approaches the length of the workpiece, while flipping is not a viable option for crown molding or other materials with only one flat surface that can rest stably on the saw’s base.
{See
Ushiwata Deck ¶¶ 13-14; Tr. at 37:15-41:7 (Katz);
id.
at 235:9-13 (Gililland).) In September 1986, Ushiwata developed his first dual-bevel saw design, which was published in 1988 as JPN '901. (Ushiwata Deck ¶ 15.)
First, the Court finds that Hitachi has not established that prior to 1992, the power tool design industry “had any
need
to move from” a single-bevel design to a dual-bevel one.
See Radix,
Given Ushiwata’s testimony that an “industry desire” for a dual-bevel saw existed “as of 1992” (Ushiwata Deck ¶ 10), Hitachi’s evidence does not meaningfully rebut Gililland’s testimony. For example, Katz testified that the first major hardware review of a single-bevel sliding miter saw was published in 1990 and praised the single-bevel saw as a vast improvement over earlier tools for making compound cuts.
(See
Tr. at 35:16-19) (“[T]he sliding [single-bevel] compound miter saw that was introduced completely overwhelmed [the reviewers], just overnight people were no longer having to carry a 200 or 300-pound saw onto a job site.”). This
favorable
review does not show that the industry recognized a need to
replace
the single-bevel design; if anything, it tends to show that as late as 1990, there was no articulated need for an alternative design. Similarly, Hitachi introduced a 1995 tool buyer’s guide that reviewed sliding compound miter saws but did not criticize the single-bevel design and noted the arrival of the Ito and Hitachi dual-bevel designs by simply stating that “[t]wo new saws ... tilt both left and right.” (Katz Deck, Ex. C at 1.)
16
The evidence establishes a “lack of
Second, the continued commercial availability of Hitachi’s own single-bevel design as recently as “a few years ago” (Tr. at 328:3-6 (Gililland)) further undercuts the notion that there was a long-felt need for a dual-bevel design to replace the single-bevel saw.
Cf. Radix,
Third, the Court finds that Hitachi’s attempt to point to JPN '901 as a failed attempt cannot succeed, because there is no evidence that JPN '901 did not actually accomplish its goal of tilting 45° in both directions. Rather, Ushiwata deemed it “not
viable,
mainly because the use of [a] bevel gear resulted in a
high cost design
that created unacceptable noise and gear backlash.” (Ushiwata Decl. ¶ 15 (emphases added);
see also
Jt. Ex. 7 at 11 (Ito’s criticism of JPN '901’s design as too costly).) To the extent that Ushiwata decided against putting JPN '901 into production because of its cost, it “was thus not a failed attempt, but a calculated business judgment to abandon a potential new product line.”
18
DyStar Textilfarben GmbH & Co.
Accordingly, the Court concludes that the Hitachi device did not fill a long-felt but unsolved industry need.
III. CONCLUSION
Based on the foregoing findings of fact and conclusions of law, the Court concludes that the person of ordinary skill in the art of power tool design would have had ample reason in the 1990s to try to combine the teachings of the AAPA or Ito with the saw assembly designs taught by Johnson, Ambrosio, or Langworthy in order to arrive at the subject matter disclosed in Claim 1 of the '294 patent and '517 application. It would have been obvious to try the “combination of known elements” in Claim 1 in order “to address a recognized problem,”
Ball Aerosol,
“Plaintiff has shown no ‘persistent’ problem ... which evaded solution by those in the art. Rather, the evidence, including the prior art, more clearly indicates that plaintiffs [design] evolved through the exercise of ordinary skill in the natural and expected development of the art, and while it may have solved a problem, it did so in an obvious way.”
Ellicott Mach. Corp. v. United States,
Notes
. But as discussed below, the Court finds that the AAPA also teaches Element 7, a motor shaft that is parallel to and above the saw shaft. See infra Section 11(C)(1).
. In addition, the Court admitted into evidence the declarations of Gary Katz, Paul Hatch, Michael Gililland, and Ushiwata, who explained the problems he observed in connection with prior art saws and which he attempted to solve with his invention (see Ushiwata Deck ¶¶ 10-16), as well as a computer-assisted drafting (CAD) presentation that Hatch created to “represent! ] [his] closest interpretation of the device described by the Johnson patent” and what it teaches. (Hatch Deck at 9; see Pl.'s. Ex. 19.)
. Finish carpentry deals with the trim that goes into a home after the drywall is complete, such as the crown molding where the walls meet the floor or ceiling. (Tr. at 25:3-8 (Katz).)
. JPN '901 is cited by the '294 patent and by Ito as a foreign patent ''reference” and discussed during their review of the prior art. (Jt. Ex. 1 at 1, 8 (col. 1 11. 35-36); Jt. Ex. 7 at 1, 12 (col. 1 11. 18-19).) At trial, plaintiff's counsel agreed that JPN '901 constitutes pri- or art. (See Tr. at 108:5-9; see also id. at 356:2-9.) However, neither the Examiner nor the Board considered JPN '901 as prior art for purposes of rejecting Hitachi's patent as obvious. (See Board’s Decision at 24; Jt. Ex. 16 (Examiner's Answer) at 11.) Therefore, the Court will not rely on JPN '901 as prior art for purposes of evaluating the non-obviousness of Claim 1.
. In the alternative, even if Johnson and Ambrosio are not from the same field of endeav- or as Hitachi's device, the Court finds that they are still analogous аrt because, for the reasons Gililland offered
(see
Tr. at 266:16-270:24, 287:20-288:10), they are "reasonably pertinent'' to the problem addressed by Hitachi’s device.
Bigio,
. Hatch conceded that surgical devices were not
per se
irrelevant to the problems considered by Ushiwata, but he rejected the relevance of Langworthy in particular.
(See
Tr. 142:14-20) (Q: "As one with ordinary skill in the art, would a patent describing a device such as this, have relevance to you in designing a miter saw?” A: "This one doesn’t. I won’t rule out surgical operators as such because of that reason, but there is very little that I can, as one skilled in the art at the time, really draw from this.”). The Court must reject Hatch’s conclusion that Langworthy is not prior art to the extent it was premised upon the relatively small scale of Langworthy’s design and function.
(See id.
at 142:4-12) (noting that Langworthy "talks about incisions” and is "dealing with an entirely different type of cut, user, or procedure.... [I]t’s described as a device that’s held like a pen. So, that would lead me to think it is a very small item for doing small cuts, and not chopping things off, of course.”) As a matter of
. Plaintiff’s pretrial statement of facts erroneously asserted that Gililland testified at his deposition that the AAPA "does not disclose” Element 2's turntable in the base. (Pl.’s Pretrial Facts ¶8 (citing Oct. 31, 2008 Gililland Dep. ["Gililland Dep.”] at 134:17-21, attached as Ex. 1 to Pl.’s Pretrial Facts).) The section cited by plaintiff does not state this, and Gililland in fact testified that the AAPA does indeed have a turntable in the base. (Gililland Dep. at 137:11-16; accord Tr. at 258:10-12 ("All miter saws have a base. All miter saws have a rotatable table. That’s what makes them a miter saw.”).)
. Notwithstanding Gililland’s testimony that the AAPA only teaches 45° bevel cuts in one direction
(see
Tr. at 236:5-6, 251:21-23, 313:10-12), the Court notes that the '294 patent expressly acknowledges (as did plaintiff) that the AAPA teaches the ability to tilt in both directions: leftward for a 45° bevel cut, but rightward for only a 20° or 30° bevel cut, after which point the AAPA’s motor housing hits the base.
(See
Jt. Ex. 1 at 8 (col. 1 11. 19-27);
see also
PL's Pretrial Facts ¶ 10.) The Court must credit the patentee's own understanding of what the AAPA teaches, as the AAPA is not a real-world saw but rather a theoretical construct of whatever prior art teachings the patentee acknowledged.
(See
Tr. at 254:3-5) (Hitachi’s counsel: "[The] AAPA is ... [F]igure 6 and 7 and lines of text. It totals 225 words. It's not that saw
[i.e.,
plaintiff's Demonstrative Exhibit 15, a previously commercially available single-bevel saw].”);
see also id.
at 236:18-20 (Gililland: "[Figure 7 of the
. As Gililland explained, Element 7 only defines the motor shaft in Hitachi’s device as parallel to and above the saw shaft, and does not define any specific displacement between them. (Tr. at 247:22-248:17.) Rather, Element 8 specifies the required displacement as at least one blade radius. (Id. at 242:23-243:3.) In other words, “Element 7 says 'above'; [E]lement 8 sa[ys] ‘how much above.' ” (Id. at 251:3-4.) Hitachi provided nothing that undercut Gililland's conclusion that the AAPA teaches Element 7.
. Hatch in fact acknowledged that Figure 1 "is not entirely accurate to scale,” and that he had to adjust the position of certain components of Figure 1 when creating his CAD presentation so that they would reflect the specifications in Johnson's text and other illustrations. (Id. at 183:20-24; Hatch Deck at 8-9.) Gililland also testified that "[i]f you were to move [the saw assembly] on that CAD drawing to a right 45[° miter position], you would also have an interference. Yet, [Johnson] clearly says in the patent that it can do a [±]45[° miter cut].” (Tr. at 271:7-19.)
. Hitachi does not appear to dispute that Ambrosio can tilt in either direction. (See PL’s Feb. 13, 2008 Statement of Material Facts Not in Dispute in Supp. of Mot. for Summ. J. [Dkt. No. 12-6] ¶ 40; cf. id. at 144:1-5 (Hatch's testimony that Ambrosio does not teach how to make ±45° cuts but does disclose ability to make some cuts).)
. Although Ambrosio's illustrations do not label every component identified in the text as relevant to the tilting of the blade, Gililland testified that the illustrations’ omissions are not relevant to his conclusion that Ambrosio can bevel in both directions. (See Tr. at 333:12-334:21.) Even if the omissions were relevant, the Court finds that the text is sufficiently specific for one familiar with geometry (let alone one ordinarily skilled in the art) to discern the components' locations. (See Jt. Ex. 10 at 5 (col. 3 11. 24-49).)
. "Whether or not [JPN '901] is a prior art reference, it is evidence that can be used to
. Although Ito’s application was filed with the PTO on May 18, 1993, and Hitachi's original '294 patent application was filed with the PTO on June 3, 1993, it is irrelevant whether Ushiwata himself knew of Ito when drafting the '294 patent, or whether Ushiwata had any reason to combine Ito with other prior art references. Findings of fact — such as whether there existed a reason to combine the prior art — are made from the perspective of the
hypothetical
person of ordinary skill in the field of invention.
See Glaverbel Societe Anonyme,
. The issue of prior failures was also previously considered by the PTO, so it is properly raised in this action. {See Examiner’s Decision at 10.)
. Only one of the tool reviews submitted with Katz's declaration discusses the limitations of the single-bevel design
(see
Katz Deck, Ex. D at 2), but this cursory reference
. Whatever customer interest did exist appeared limited to a subset of single-bevel saw users. Katz testified that the single-bevel design’s limitations "wouldn’t matter” in larger rooms (Tr. at 40:16-20) and that despite the availability of dual-bevel saws, finish carpenters "still prefer to whirly-bird their material around rather than swinging the saw to the second bevel, to the right-hand bevel, if it's easier to swing the material .... ”
(Id.
at 42:17-23.) Plaintiff thus did not establish that carpenters
as a whole
were not content with their "work-around” of either helicoptering or flipping the workpiece (Tr. at 37:18 (Katz)), or even that finish carpenters who cut crown molding were not content with being limited to the helicoptering work-around.
See Nat’l Steel Car,
. However, even if JPN '901 were a failed attempt, this single failure is not persuasive evidence of non-obviousness. Non-obvious