PTAB

IPR2012-00004

Macauto v. BOS GmbH & KG

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Roll-Up Blind with Stowable Guiding Members for the Window of a Vehicle
  • Brief Description: The ’291 patent discloses a roll-up window blind for vehicles. The invention features a pull rod with retractable guide elements that move between a stowed position within the pull rod's circumferential surface and an extended position to guide the blind along a window pane.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ament et al. - Claims 1, 5, 8-16, and 18-20 are obvious over Ament in view of Nishiwaki, Knowles, or Burdick.

  • Prior Art Relied Upon: Ament (Patent 4,836,263), Nishiwaki (Japanese Utility Model S54-144521), Knowles (Patent 4,254,850), and Burdick (Patent 3,829,116).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ament, a patent also owned by the Patent Owner, teaches nearly every element of independent claim 1, including a roll-up blind with a pull rod and guide elements. The primary distinction is that Ament’s guides do not retract into the circumferential surface of the pull rod as claimed. Petitioner asserted that Nishiwaki, Knowles, and Burdick each disclose various forms of retractable wheels or rollers that supply this missing limitation.
    • Motivation to Combine: A POSITA would combine the retractable roller guides of Nishiwaki with Ament’s system to satisfy known goals in the automotive field, such as reducing vibration and improving aesthetics. Alternatively, a POSITA would incorporate the retractable wheels taught by Knowles or Burdick to achieve a more compact design and prevent snagging, which are ordinary design considerations for a mechanical engineer.
    • Expectation of Success: The use of retractable wheels and rollers was well-known in various mechanical arts, making their integration into Ament's existing blind system predictable and straightforward.

Ground 2: Obviousness over Nagase et al. - Claims 1, 2, 5, 8-16, and 18-21 are obvious over Nagase in view of Nishiwaki, Knowles, Burdick, or Koike.

  • Prior Art Relied Upon: Nagase (JP Patent Publication No. H9-207565), Nishiwaki (Japanese Utility Model S54-144521), Knowles (Patent 4,254,850), Burdick (Patent 3,829,116), and Koike (JP Publication of Patent Application S58-20515).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented Nagase as an alternative primary reference that also discloses an automotive window blind system. Petitioner argued that Nagase teaches all elements of claim 1 except for guide elements that retract specifically into the pull rod's circumferential surface; Nagase’s guides instead retract into a longitudinal case. The secondary references (Nishiwaki, Knowles, Burdick, and Koike) were cited to teach this missing feature, analogous to the argument in Ground 1.
    • Motivation to Combine: The motivation was parallel to that of Ground 1. A POSITA would be motivated to combine the known benefits of retractable guides—such as vibration damping, space-saving, and anti-snagging—from the secondary references with the automotive blind system disclosed in Nagase to improve its function and aesthetics.

Ground 3: Obviousness over Ament Combination with Zweigart - Claims 3, 4, 6, and 7 are obvious over Ament in view of Nishiwaki, Knowles, or Burdick, and further in view of Zweigart.

  • Prior Art Relied Upon: Ament (’263 patent), Nishiwaki (Japanese Utility Model S54-144521), Knowles (’850 patent), Burdick (’116 patent), and Zweigart (DE Patent No. 4202081).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims 3, 4, 6, and 7. Petitioner argued that Zweigart, also in the field of automotive window blinds, teaches installing the winding shaft in a recessed housing within the vehicle's "hat deposit area" (claim 3), providing an outlet slot in that housing (claim 4), and shaping the pullrod to complementarily close the outlet slot when retracted (claims 6 and 7).
    • Motivation to Combine: Since both Ament and Zweigart relate to automotive blind systems, a POSITA would combine Zweigart’s recessed housing and complementary pullrod/slot features with the Ament system. This combination would achieve a more aesthetically pleasing, integrated, and compact design, as hiding the mechanism in the hat deposit area was a known and desirable design objective.

  • Additional Grounds: Petitioner asserted several additional obviousness challenges. These included substituting Naruse (JP Patent Publication No. H10-24734) as the primary base reference in combinations similar to those above. Further grounds added Blondin (FR Patent No. 614,687) to teach a bearing axis extending at a right angle to the pullrod for claim 17, and combined Zweigart with the Nagase-based and Naruse-based combinations to address claims 3, 4, 6, and 7.

4. Key Claim Construction Positions

  • The term "circumferential surface" was central to the obviousness arguments. Petitioner argued for its broadest reasonable interpretation, citing dictionary definitions to mean "of, at, or near the circumference; surrounding." This broad construction would allow the retractable guides of the prior art, which retract near or into a holder rather than strictly inside a pull rod, to meet the claim limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-21 of the ’291 patent as unpatentable under 35 U.S.C. §103.