UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. SHIMANO INC., Petitioner

Transcription

1 Filed on behalf of Shimano Inc. By: Rod S. Berman, Esq. Reza Mirzaie, Esq. Brennan C. Swain, Esq. JEFFER MANGELS BUTLER & MITCHELL LLP 1900 Avenue of the Stars, 7th Floor Los Angeles, CA Tel.: (310) Fax: (310) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SHIMANO INC., Petitioner v. Patent Owner of U.S. Patent 8,382,022 to Shibata et al. Appl. No. 13/009,554 filed January 19, 2011 Issued February 26, 2013 IPR Trial No. TBD PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,382,022 PURSUANT TO 35 U.S.C. 312 AND 37 C.F.R

2 TABLE OF CONTENTS Page I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)...1 A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)...1 B. Related Matters Under 37 C.F.R. 42.8(b)(2)...1 C. Lead and Back-up Counsel Under 37 C.F.R. 42.8(b)(3)...1 D. Service Information Under 37 C.F.R. 42.8(b)(4)...2 II. GROUNDS FOR STANDING UNDER 37 C.F.R (a)...2 III. SUMMARY OF ISSUE PRESENTED...2 IV. INTRODUCTION...3 V. STATEMENT OF PRECISE RELIEF REQUESTED...4 VI. TECHNICAL BACKGROUND AND STATE OF THE ART...5 VII. LEVEL OF ORDINARY SKILL IN THE ART...8 VIII. CLAIM CONSTRUCTION...8 IX. SCOPE AND CONTENT OF THE PRIOR ART...9 X. PROPOSED REJECTIONS...14 XI. SECONDARY CONSIDERATIONS, EVEN IF CONSIDERED, FAIL TO OVERCOME THE EVIDENCE OF OBVIOUSNESS...55 A. No Unexpected Results Over Close Prior Art...55 B. No Skepticism or Failure by Others...57 XII. THE PROPOSED REJECTIONS RAISE NEW ISSUES IN WHICH SHIMANO WILL LIKELY PREVAIL...58 XIII. CONCLUSION...59 i

3 TABLE OF AUTHORITIES Page(s) CASES Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007)...55 Newell Cos., Inc. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988)...55 STATUTES 35 U.S.C. 102(a)... 9, 10, 12, (b)... 9, 10, 12, (a)... passim (a) C.F.R. 42.8(a)(1) (b)(1) (b)(2) (b)(3) (b)(3) (b)(4) (a) (b) (a) Fed. Reg (Aug. 12, 2012)...3 ii

4 EXHIBIT LIST EXHIBIT 1001 EXHIBIT 1002 EXHIBIT 1003 EXHIBIT 1004 EXHIBIT 1005 EXHIBIT 1006 EXHIBIT 1007 U.S. Patent No. 8,382,022 to Shibata et al. File History of U.S. Application No. 13/009,554 (Issued as U.S. Patent No. 8,382,022) Declaration of Scott L. Springer, P.E., Ph.D. Japanese Patent Publication No. JP to Daiwa Seiko Co. Ltd. Japanese Patent Publication No. JP to Daiwa Seiko Co. Ltd. U.S. Patent No. 6,598,819 to Furomoto Japanese Patent Publication No. JPH iii

5 Shimano Inc. ( Shimano or Petitioner ) requests inter partes review under 35 U.S.C. 312 and 37 C.F.R of Claims 1-12 ("The Challenged Claims") of U.S. Patent No. 8,382,022 ( the 022 patent ), issued on February 26, I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) As set forth below and pursuant to 37 C.F.R. 42.8(a)(1), the following mandatory notices are provided as part of this Petition: A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) Shimano is the real party-in-interest for Petitioner. B. Related Matters Under 37 C.F.R. 42.8(b)(2) To Shimano's knowledge, the 022 patent has never been asserted in litigation. C. Lead and Back-up Counsel Under 37 C.F.R. 42.8(b)(3) Pursuant to 37 C.F.R. 42.8(b)(3) and 42.10(a), Shimano provides the following designation of counsel: Lead Counsel Rod. S. Berman (Reg. No. 31,483) rberman@jmbm.com Postal and Hand-Delivery: Back-up Counsel Reza Mirzaie (Reg. No. 69,138) rmirzaie@jmbm.com Brennan C. Swain (Reg. No. 43,175) bswain@jmbm.com Postal and Hand-Delivery: 1

6 1900 Ave of the Stars, 7th Floor Los Angeles, CA, Telephone: (310) Fax: (310) Ave of the Stars, 7th Floor Los Angeles, CA, Telephone: (310) Fax:(310) D. Service Information Under 37 C.F.R. 42.8(b)(4) Please address all correspondence to the lead counsel at the address shown above. Shimano also consents to electronic service by to: and II. GROUNDS FOR STANDING UNDER 37 C.F.R (A) Shimano certifies that the 022 patent is available for inter partes review and that Shimano is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in this petition. III. SUMMARY OF ISSUE PRESENTED This petition primarily presents the Patent Trial and Appeal Board with the following issue: The Challenged Claims of the 022 Patent recite a spinning fishing reel with a magnetic seal arranged between the driving part and a support part. The prior art, including several references not before the Examiner during the prosecution of the 022 Patent, teach spinning reels with such magnetic seals between driving parts and support parts. The prior art likewise discloses many additional elements 2

7 recited in the Challenged Claims. Are the Challenged Claims rendered obvious to one of ordinary skill in the art in light of the prior art in existence at the time of the purported invention? IV. INTRODUCTION Congress's purpose for enacting the AIA and allowing for inter partes review ("IPR") is straightforward: to establish a more efficient and streamlined system that will improve patent quality and, if warranted, cancel unpatentable claims. 77 Fed. Reg (Aug. 12, 2012). This petition presents a textbook usage of the IPR provisions as there are numerous prior art references most of which were never before the Examiner that independently or collectively render the challenged claims invalid. Significantly, the Examiner did not have the benefit of receiving or reviewing JP (the "JP212 publication") and U.S. Patent No. 6,598,819 (the " 819 patent"), the two leading prior art references on which this Petition is based. As demonstrated above, these spinning-fishing-reel references alone disclose all elements of many of the Challenged Claims including a magnetic seal arranged between the driving part and a support part. Moreover, a third reference, JP (the "JP974 publication"), was never cited by the Examiner. This reference expressly teaches most of the remaining claim elements in the other Challenged Claims. Consequently, when taken together, it would have 3

8 been obvious for one of ordinary skill in the art at the time of the invention to combine all the elements recited in the Challenged Claims. Accordingly, the proposed rejections below render the challenged claims invalid under 35 U.S.C. 103 and Petitioner is reasonably likely to prevail in demonstrating their unpatentability. V. STATEMENT OF PRECISE RELIEF REQUESTED Shimano respectfully requests that the Board cancel Claims 1-12 of the 022 patent based on the following grounds for unpatentability: Ground 1. Claims 1-12 are invalid under 35 U.S.C. 103(a) as being obvious over the JP212 publication in view of JPH (the "JP042 publication"). Ground 2. Claims 1-12 are invalid under 35 U.S.C. 103(a) as being obvious over the JP212 publication in view of the JP042 publication and the JP974 publication. Ground 3. Claims 1-3 and 5-8 are invalid under 35 U.S.C. 103(a) as being obvious over the 819 patent in view of the JP212 publication. Ground 4. Claims 9-12 are invalid under 35 U.S.C. 103(a) as being obvious over the 819 patent in view of the JP042 publication and the JP974 publication. 4

9 VI. TECHNICAL BACKGROUND AND STATE OF THE ART The concept of expelling a fishing line without rotation of the spool mounted on an axis in parallel to the fishing rod was developed and disclosed in U.S. Patent No. 879,468 in 1906 by A. H. Illingsworth. This design included means for longitudinal motion of the spool as line is being added to it and an adjustable drag or brake device for resisting rotation of the spool as a fish might cause in drawing out line after being hooked. (Springer Decl., 10.) The same inventor made further improvements that resulted in U.S. Patent No. 1,187,840, in 1916, which discloses a design with many features common to modern spinning reels, including a spool that does not rotate while casting, mounted with the spool axis in parallel with the fishing rod, a handle for retrieving the line mounted transverse to the spool, and a rotational line winding flier equipped with a line catching device commonly called a bail in modern spinning reels. (Id.) Later, the term spinning-reel was described in U.S. Patent No. 2,344,209, which is directed primarily at structural improvements permitting more economical manufacture. F. J. Martini further advanced the state of the art in 1951 under U. S. Patent No. 2,546,465. (Springer Decl., 11.) His design includes a mechanism that permits the spool to be retracted into the cup shaped flier via a manual lever, which simultaneously releases the line engagement wire (bail) to a non-engaging position, allowing the line to free spin off of the spool. This design also provides a 5

10 two pivot line engagement wire, and is convertible for right or left hand handle manipulation. (Id.) Since then, one key feature that has seen considerable development is the sealing of various moving parts against contamination by water and debris. Indeed, approximately 100 patents have been published that reference spinning reels and seals. (Springer Decl., 12.) While most of the sealing developments have used traditional elastomeric components, some inventions have deployed magnetic seals for fishing reel seal applications. (Id.) Magnetic seals have been employed (in general) since at least the 1970 s, following the disclosure of restraining fluid within a magnetic field as taught by U.S. Patent No. 3,612,630. One early patent that discloses the use of magnetic seals for fishing reel applications is U.S. Patent No. 6,851,638 (2005), which specifies magnetic seals as 6

11 a means for sealing fluid bearings of a fishing reel. (Id.) The use of fluid seals employing magnetic fluids are included as other embodiments for sealing members of spinning reels in several references, such as the '819 patent, granted in This patent likewise explains what was obvious to one of ordinary skill at the time of the alleged invention already would have known: that magnetic seals are interchangeable with the other types of seals used at the time. The JP042 publication also demonstrates the use of magnetic seals in a broad range of fishing reel applications including multiple locations on spinning reels. Another issue that has received considerable attention in the past few decades is the weight reduction of spinning reels. (Springer Decl., 13.) Working toward the weight reduction goal, U.S. Patent No. 4,784,347 discloses a design for a reduced weight reciprocating slide mechanism. (Id.) In 2003, U.S. Patent No. 6,572,044 was issued detailing the design of a spinning reel spool aimed at weight reduction. (Id.) The JP212 publication also discloses a rotor design for a spinning reel that uses radial holes in the rotor to reduce weight and permit the inspection for foreign matter between the rotor and the reel body. Holes have been incorporated into the rotor for other purposes as well. U.S. Patent No. 6,929,204 demonstrates the use holes through portions of a rotor for the purpose of adjusting mass and balance. U.S. Patent No. 6,382,540 further discloses spinning reel rotor with holes adapted to receive a protective cover. (Id.) 7

12 VII. LEVEL OF ORDINARY SKILL IN THE ART In the field relevant to the 022 Patent, a person of ordinary skill in the art would have held a bachelor's degree in mechanical engineering or a closely related discipline, and one to two years of practical, academic, or industrial experience in studying, designing, or building mechanical gears, including, for example, those in fishing reels. (Springer Decl., 14.) In any event, here, Shimano's showing of invalidity is sufficiently strong that any reasonable standard for ordinary skill in the art would yield the same conclusion: Claims 1-12 of the 022 Patent are invalid. VIII. CLAIM CONSTRUCTION The claim terms in the 022 patent are presumed to take on their ordinary and customary meaning based on the broadest reasonable interpretation of the claim language. 37 C.F.R (b). Shimano does not presently believe that any special meanings apply to the claim terms in the 022 patent. Shimano's position regarding the scope of the claims should not be taken as an assertion regarding the appropriate claim scope in other adjudicative forums where a different claim interpretation standard may apply. 8

13 IX. SCOPE AND CONTENT OF THE PRIOR ART Presented below is a summary of the main prior art reverences on which this Petition is based: The JP212 publication was published on June 18, Therefore, it is prior art at least under 35 U.S.C. 102(a) and (b). The JP212 publication discloses a spinning reel for fishing that includes a reel body 12, a rotor 60 with a cylindrical portion or barrel 60A, a spool 50, and a handle 32 for rotating the rotor 60 and winding the line on the spool 50. (Springer Decl., 16.) 9

14 Moreover, a drive shaft 22 extends axially through the reel body 12 and imparts the rotation of the handle 32 to the rotor 60. (Id.) The spinning reel also includes seals in various locations for preventing water from entering unwanted locations. One particular seal 104 (identified in FIG. 2 above and in FIG. 4 of JP212) is positioned inside the cylindrical portion 60A at a position that it protects the one-way clutch 82 from the entry of water. One feature of the spinning reel is the provision of radial-direction openings 63 in the cylindrical portion 60A of the rotor 60. The openings reduce the weight of the rotor and provide a "lightweight item." (Springer Decl., 18.) The 819 patent was published on July 29, Therefore, it is prior art at least under 35 U.S.C. 102(a) and (b). The 819 patent discloses a spinning reel 10

15 for fishing that includes a reel body 2a, a rotor 3 with a cylindrical portion 30, a spool 4, and a handle 1 for rotating the rotor and winding a fishing line on the spool 4. A pinion gear 12 extends axially through the reel body 2a and imparts the rotation of the handle 1 to the rotor 3. (Springer Decl., 19.) The spinning reel also includes seals in various locations for preventing water from entering unwanted locations. One particular seal (referred to as sealing plate 59) is positioned inside the cylindrical portion 30 of the rotor 3 on the front portion of the forward projecting tubular portion 2c and protects the one-way clutch 51 from water. The 819 patent teaches that the seals disclosed therein can be interchanged with magnetic seals. (Springer Decl., 20.) 11

16 The JP042 publication was published on October 12, Therefore, it is prior art at least under 35 U.S.C. 102(a) and (b). It discloses a sealing mechanism for a fishing reel. In particular, the JP042 publication discloses a magnetic seal that can be used in both a double bearing fishing reel (baitcasting reel) and a spinning reel. Generally, the JP042 publication teaches a magnetic seal that can be used to seal the opening between a component and a rotating shaft that extends therethrough. (Springer Decl., 21.) The first embodiment of the magnetic seal in the JP042 publication is used in the double bearing reel. The magnetic seal 33a of the first embodiment includes a ring magnet 35, a pair of magnetic retaining rings 34 and a magnetic fluid 36 that all surround a spool shaft 16. (Springer Decl., 21.) The magnet 35 provides a magnetic circuit between the magnet 35, the magnet retaining rings 34, the magnetic fluid 36 and spool shaft

17 The second embodiment of the magnetic seal 125 is for the spinning reel and is used to keep water out of the rotor 60. The spinning reel disclosed in the JP042 publication includes a reel body 102a, a rotor 103 with a cylindrical portion 130, a spool 104, and a handle 101 for rotating the rotor 103 and winding the line on the spool 104. A pinion gear 112 extends axially through the reel body 102a and imparts the rotation of the handle 101 to the rotor 103. (Springer Decl., 22.) The JP974 publication was published on December 10, Therefore, it is prior art at least under 35 U.S.C. 102(a) and (b). It discloses a spinning reel 1 for fishing that includes a reel body 1a, a rotor 8 with a cylindrical portion, a spool 10, and a handle 5 for rotating the rotor 8 and winding the line on the spool

18 A driving cylinder shaft (a pinion gear) 13 extends axially through the reel body 1a and imparts the rotation of the handle 5 to the rotor 8. (Springer Decl., 23.)The spinning reel 1 includes a retaining component 33 with sealing means 40 for protecting the one-way clutch 30. In an embodiment, the retaining component 33 can be unscrewed from the front portion of the reel body 1a to access the one-way clutch 30. (Springer Decl.,.) The above references present new grounds for invalidity, never before considered by the Examiner. Taken together, their highly analogous and relevant disclosures teach every element of the challenged claims. X. PROPOSED REJECTIONS Claims 1-12 of the 022 patent would have been obvious to a person of ordinary skill in the art in view of the prior art referenced herein under 35 U.S.C. 103(a). Ground 1. Claims 1-12 are invalid under 35 U.S.C. 103(a) as being obvious over the JP212 publication in view of the JP042 publication. (Springer Decl., 25.) Claim 1. A spinning reel for fishing comprising: JP212 publication and JP042 publication The JP212 publication and JP042 publication both teach spinning reels for fishing. (Springer Decl., 25.) 14

19 a reel body including a front portion; a handle provided in the reel body; a spool on which a fishing line is to be wound; As shown below in FIG. 2 of the JP212 publication, the spinning reel of the JP212 publication includes a reel body 12 that includes a front portion, a handle 32 that is provided in the reel body 12, a spool 50 on which fishing line is to be wound, a rotor 60 that includes a cylindrical portion 60A that accommodates the front portion of the reel body 12, and a fishing line guide part 72a. (Springer Decl., 25.) a rotor that includes a cylindrical portion accommodating the front portion of the reel body and a fishing line guide part, the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool, an opening being formed radially through the cylindrical portion of the rotor; In the spinning reel of the JP212 application, the rotor 60 is rotated by the rotational manipulation of the handle 32 to wind the fishing line on the spool 50. (Springer Decl., 25.) As shown below in FIG. 3 of the JP212 publication, the JP212 publication teaches an opening 63 that is formed radially through the cylindrical portion (referred to as barrel 60A in the JP212 publication) of the rotor 60. (Springer Decl., 25.) 15

20 The JP212 publication states in the "Solution" section that "barrel 60A has radial direction openings 63 situated on a peripheral wall part 64 surrounding the front part F of the reel body." (Springer Decl., 25.) Furthermore, in paragraph [0031], the JP212 publication states "it is possible to have a lightweight item with improved fishing operability with the openings 63, 71 formed on the periphery of the rotor 6, specifically the peripheral wall part 64 and the arms 70." This is the same purpose as the opening 3B in the rotor of the '022 patent. (Springer Decl., 25.) 16

21 a driving part transmitting the rotation of the handle to the rotor; A driving part/drive shaft 22 (shown in orange) is present in the JP212 publication, as is shown in FIG. 2 below. The pinion gear transmits the rotation of the handle to the rotor. (Springer Decl., 25.) a support part provided in the front portion of the reel body and supporting the driving part; and The support part is described in the '022 patent as follows: "As clearly illustrated in FIG. 2, the pinion 8 is rotatably supported in the reel body 1 in such a way that the front and back portions of the pinion 8 with respect to the pinion teeth 8a are supported by bearings 9 and 9, which are fitted to a support portion 1a (a support portion provided in the front portion of the reel body 1) integrally formed with the reel body 1." The support portion is essentially a portion of the reel body that supports the pinion and through which the pinion extends. (Springer Decl., 25.) As shown in FIG. 2 below (only a portion of FIG. 2 is shown), the JP212 publication includes a support part (shown in green) provided in the front portion of the reel body 12 that supports the driving part 22. (Springer Decl., 25.) a magnetic seal device arranged between the As shown below, the JP212 application includes a seal arranged between the driving part (shown in green) 17

22 driving part and the support part. and the support part (shown in orange). The seal in the JP212 application is positioned such that it surrounds the drive shaft 22 so as to prevent water from entering the clutch 82 and the bearings 46b therebehind. The seal is not a magnetic seal device. However, as shown below in FIG. 9 of the JP042 publication, the JP042 discloses a magnetic seal device 125 (and other magnetic seals, 53, 124 and 33a) that surrounds the spool shaft 16 and prevents water from entering the rotor 103, which houses the clutch 151 and the bearings 116a that support the pinion

23 2. The spinning reel according to claim 1 further comprising a cap-shaped cover body including a surrounding wall mounted in the front portion of the reel body, As both seals serve the same function, preventing water from entering an opening through which a shaft extends so as to protect the clutch and bearings, it would have been obvious to one of ordinary skill in the art to replace the non-magnetic seal of the JP212 publication with a magnetic seal as taught in JP042. Furthermore, as discussed above in the Technical Background and State of the Art section, the 819 patent teaches that the non-magnetic seals in fishing reels can be interchanged with magnetic seals. Accordingly, for this additional reason, it would have been obvious to one of ordinary skill in the art to replace the non-magnetic seal of the JP212 publication with a magnetic seal as taught in JP042. (Springer Decl., 25.) As shown below in FIG. 4 of the JP212 publication, the spinning reel of the JP212 publication includes a cap-shaped cover body including a surrounding wall mounted in the front portion of the reel body. The '022 patent describes the cap-shaped cover body 50 as follows: "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50 having substantially a pipe shape (substantially a ring shape) as described below." Column 4, lines The cap-shaped cover body includes the peripheral wall part 98 and the 19

24 fixing component 102, which clearly have a pipe shape or a ring shape. wherein the magnetic seal device is mounted in a front portion of the cover body, and The seal 104 is mounted in the front portion of the cover body. (Springer Decl., 25.) The driving part/drive shaft 22 passes through the front portion of the cover body. (Springer Decl., 25.) wherein the driving part passes through the front portion of the cover body. 3. The spinning reel according to claim 2, wherein the magnetic seal device is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. 4. The spinning reel according to claim 3, wherein the magnetic seal device includes a magnet, a cylindrical magnetic body forming a magnetic circuit between the magnetic As shown above in FIG. 2 of the JP212 publication, the seal is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. If the seal of the JP212 publication was replaced with the magnetic seal of the JP042 publication, because magnet seals have parallel poles, the seal would necessarily have to extend perpendicularly with the axis of the drive shaft 22 and would therefore be substantially flush with the front surface of the cover body. (Springer Decl., 25.) There is not antecedent basis for the term "magnetic ring," and, therefore, claim 4 is invalid. However, it is believed that "magnetic ring" should be "magnetic body." (Springer Decl., 25.) Should the Board hold that the lack of antecedent basis does not render this claim invalid, then, as discussed above, the JP042 publication teaches the use of 20

25 body and the magnet and magnetic fluid maintained between the magnet and the magnetic ring. magnetic seals in a plurality of locations within a reel. Seals, 125, 124, 53 and 33a are all magnetic seals of similar construction. Magnetic seal 33a is shown the best in the drawings and is detailed in FIG. 6 of the JP042 publication. (Springer Decl., 25.) As is shown in FIG. 6, the magnetic seal device 33a includes a magnet 35, a cylindrical magnetic body 16 and a magnetic fluid 36. A circuit is formed between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic "body". (Springer Decl., 25.) The seal in the JP212 application is positioned such that it surrounds the drive shaft 22 so as to prevent water from entering the clutch 82 and the bearings 46b therebehind. The seal is not a magnetic seal device. However, seal 33a (shown above) as well as seals 125, 124 and 53 taught in the JP042 publication are positioned to prevent water from entering bearings. As the seals taught in both the JP212 and JP042 publications serve the same function, it would have been obvious to one of ordinary skill in the art to replace the non-magnetic seal of the JP212 publication 21

26 with a magnetic seal as taught in JP042. Furthermore, as discussed above in the Technical Background and State of the Art section, the 819 patent teaches that the non-magnetic seals in fishing reels can be interchanged with magnetic seals. (Springer Decl., 25.) 5. The spinning reel As shown in FIG. 4 of the JP212 publication below, according to claim 3 the spinning reel includes a rolling type one-way further comprising a clutch 82 that allows the rotation of the driving part 22 rolling type one-way in one direction and prevents the rotation of the clutch allowing the driving part 22 (shown in orange) in the other rotation of the driving direction. The clutch 82 includes an inner race/inside part in one direction and component 84 (shown in blue). (Springer Decl., 25.) preventing the rotation of the driving part in the If the seal (shown in yellow) of the JP212 publication other direction, was replaced with the magnetic seal of the JP042 publication, due to the positioning of the seal and the wherein the magnetic inner race/inside component 84, inner race/inside body functions as an component 84 would function as the magnetic body of inner race of the onethe one-way clutch 82. A purple rectangle has been way clutch. inserted into FIG. 4 below to show where the magnetic seal would go to replace the seal 104. (Springer Decl., 25.) 6. The spinning reel according to claim 1, wherein the opening of the rotor has a The JP212 publication teaches openings 63 in the rotor and shows them in FIGS. 3 and 6. The JP212 publication states in paragraph [0031] that "it is possible to have a lightweight item with improved 22

27 rectangular shape. 7. The spinning reel according to claim 1, wherein the rotor includes a triangleshaped notch opening. 8. The spinning reel according to claim 1, wherein the rotor includes a pair of arms formed at opposite sides of the cylindrical portion of the rotor, and fishing operability with the openings 63, 71 formed on the periphery of the rotor 6, specifically the peripheral wall part 64 and the arms 70." The '022 patent recites "the spinning reel for fishing according to this embodiment can reduce not only the weight of the rotor 3 (achieving the lightweight of the rotor 3) thanks to the opening 3B (the notch opening 3C)." Col. 8, lines Therefore, the purpose of the opening in the rotor (weight reduction) is the same in both the JP212 publication and the '022 patent. The openings 63 in the rotor of the JP212 publication are triangularly shaped openings. (Springer Decl., 25.) As shown in FIG. 6 below, the JP212 publication teaches a triangle-shaped notch opening in the rotor. As shown in FIG. 3 below, the rotor of the JP212 publication includes a pair of arms 70 formed at opposite sides of the cylindrical portion 64 of the rotor 60 and also includes a curved reinforcing member 67 that connects the cylindrical portion 64 of the rotor 60 and the pair of the arms 70. (Springer Decl., 25.) a curved reinforcing member connecting the cylindrical portion of 23

28 the rotor and the pair of the arms. 9. A spinning reel for fishing comprising: a reel body including a front portion; The JP212 publication and JP042 publication both teach spinning reels for fishing. (Springer Decl., 25.) As shown in FIG. 2 below, the JP212 publication discloses a reel body that includes a front portion, a handle 32 that is provided in the reel body, a capa handle provided in the shaped cover body with a surrounding wall that is reel body; mounted in the front portion of the reel body (the capshaped cover body comprises the peripheral wall part a cap-shaped cover body 98 and the fixing component 102 see FIG. 4 below), a including a surrounding spool 50 on which a fishing line is to be wound, a rotor wall mounted in the 60 including a fishing line guide part 72a, a driving front portion of the reel part/drive shaft 22 that passes through the cover body body; and transmits the rotation of the handle to the rotor, and a support part (shown in green) that is provided in the a spool on which a front portion of the reel body and that supports the fishing line is to be driving part. The rotor is rotated by the rotational wound; manipulation of the handle to wind the fishing line on the spool. (Springer Decl., 25.) a rotor including a fishing line guide part, the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool; 24

29 a driving part passing through the cover body and transmitting the rotation of the handle to the rotor; a support part provided in the front portion of the reel body and supporting the driving part; and a magnetic seal device The '022 patent describes the cap-shaped cover body 50 as follows: "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50 having substantially a pipe shape (substantially a ring shape) as described below." Column 4, lines The cap-shaped cover body includes the peripheral wall part 98 and the fixing component 102, which clearly have a pipe shape or a ring shape. (Springer Decl., 25.) As shown below, the JP212 publication includes a seal 25

30 mounted in the cover body and including a magnet, arranged between the driving part (shown in green) and the support part (shown in orange). The seal in the JP212 application is positioned such that it surrounds the drive shaft 22 so as to prevent water from entering the clutch and the bearings therebehind. The seal is not a magnetic seal device. However, as shown below in FIG. 9 of the JP042 publication, the JP042 discloses a magnetic seal device 125 (and other magnetic seals, 53, 124 and 33a) that surrounds the spool shaft 16 and prevents water from entering the rotor, which houses the clutch and the bearings that support the pinion. (Springer Decl., 25.) 26

31 a cylindrical magnetic body forming a magnetic circuit between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic ring. As both seals serve the same function, preventing water from entering an opening through which a shaft extends so as to protect the clutch and bearings, it would have been obvious to one of ordinary skill in the art to replace the non-magnetic seal of the JP212 publication with a magnetic seal as taught in JP042. Furthermore, as discussed above in the Technical Background and State of the Art section, the 819 patent teaches that the non-magnetic seals in fishing reels can be interchanged with magnetic seals. (Springer Decl., 25.) There is not antecedent basis for the term "magnetic ring," and, therefore, claim 4 is invalid. However, it is believed that "magnetic ring" should be "magnetic body. (Springer Decl., 25.) The magnetic seal of the spinning reel embodiment of the JP042 publication is numbered 125. The poor drawings of the JP042 publication make it difficult to see the components of the magnetic seal. However, in paragraph [0055] the JP042 patent recites "Magnetic seal 125, which has a structure identical to magnetic seal 124, is disposed forward of bearing 135." Magnetic seal 124 is also difficult to see in the drawings. The JP042 patent recites in paragraph [0052] "This magnetic seal 124 is structured identically to that mounted on spiral shaft 26 of Implementation Mode 1, and it provides a pair of the magnetic retention ring and magnetic fluid." Therefore, "Mode 1," which is shown below in FIG. 6 (only a portion of FIG. 6 is shown to concentrate on the magnetic seal). (Springer Decl., 25.) As is shown in FIG. 6, the magnetic seal device includes a magnet, a cylindrical magnetic body and magnetic fluid. A circuit is formed between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic "body". 27

32 10. The spinning reel according to claim 9, wherein the magnetic seal device is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. As shown above in FIG. 2 of the JP212 publication, the seal is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. If the seal of the JP212 publication was replaced with the magnetic seal of the JP042 publication, because magnet seals have parallel poles, the seal would necessarily have to extend perpendicularly with the axis of the drive shaft 22 and would therefore be substantially flush with the front surface of the cover body. (Springer Decl., 25.) 11. The spinning reel according to claim 10 further comprising a rolling type one-way clutch allowing the rotation of the driving part in one direction and preventing the rotation of the driving part in the As shown in FIG. 4 of the JP212 publication below, the spinning reel includes a rolling type one-way clutch 82 that allows the rotation of the driving part in one direction and prevents the rotation of the driving part (shown in orange) in the other direction. The clutch includes an inner race/inside component 84 (shown in blue). (Springer Decl., 25.) If the seal (shown in yellow) of the JP212 publication 28

33 other direction, wherein the magnetic body functions as an inner race of the oneway clutch. 12. The spinning reel according to claim 9, wherein the rotor includes a pair of arms formed at opposite sides of the cylindrical portion of the rotor, was replaced with the magnetic seal of the JP042 publication, due to the positioning of the seal and the inner race/inside component 84, inner race/inside component 84 would function as the magnetic body of the one-way clutch. A purple rectangle has been inserted into FIG. 4 below to show where the magnetic seal would go to replace the seal 104. (Springer Decl., 30.) As shown in FIG. 3 below, the rotor of the JP212 publication includes a pair of arms formed at opposite sides of the cylindrical portion of the rotor and also includes a curved reinforcing member that connects the cylindrical portion of the rotor and the pair of the arms. (Springer Decl., 25.) and a curved reinforcing member connecting the cylindrical portion of the rotor and the pair of the arms. 29

34 Ground 2. Claims 1-12 are invalid under 35 U.S.C. 103(a) as being obvious over the JP212 publication in view of the JP042 publication and the JP974 publication. (Springer Decl., 26.) Claim a reel body including a front portion; The JP212 publication, JP042 publication and JP974 publication. The JP212 publication, JP042 publication and JP974 publication all teach spinning reels for fishing. (Springer Decl., 26.) See above. a handle provided in the reel body; See above. a spool on which a fishing line is to be wound; See above. 1. A spinning reel for fishing comprising: a rotor that includes a cylindrical portion See above. accommodating the front portion of the reel body and a fishing line guide part, See above. 30

35 the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool, an opening being formed radially through the cylindrical portion of the rotor; See above. a driving part transmitting the rotation of the handle to the rotor; See above. a support part provided in the front portion of the reel body and supporting the driving part; and See above. See above. a magnetic seal device arranged between See above. the driving part and the support part. 2. The spinning reel As shown in FIG. 6 of the JP974 publication below, the according to claim 1 spinning reel includes a cap-shaped cover body 33 that further comprising a includes a surrounding wall. The cap-shaped cover cap-shaped cover body body is mounted in the front portion of the reel body. including a surrounding The '022 patent describes the cap-shaped cover body 50 wall mounted in the as follows: "The rolling type one-way clutch 10 is front portion of the reel surrounded, and thus protected, by a protection cover body, (ring-shaped cover body) 50 having substantially a pipe shape (substantially a ring shape) as described below." Column 4, lines The cap-shaped cover body 33 of the JP974 publication clearly has a pipe shape or a ring shape. (Springer Decl., 26.) wherein the magnetic seal device is mounted in a front portion of the cover body, and The seal is mounted in the front portion of the cover body, and wherein the driving part The driving part passes through the front portion of the passes through the front cover body. (Springer Decl., 26.) portion of the cover body. The purpose of the cap-shaped cover body (or ring shaped cover body) 50 in the '022 patent is to protect 31

36 the clutch. "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50. (Springer Decl., 26.) The purpose of the cap shaped cover body (retaining component 33) in the JP974 publication is to protect the clutch. The "Solution" section of the JP974 publication recites the following: "a sealing means 40, 41 to prevent the penetration of water into the inside of the reel body 1a where the bearing 11A or the unidirectional clutch 30 is arranged, that is situated at least in between the bores 33b for the retaining component 33 and the pinion gear 13 or the rotating component 8 that is unitized with the pinion gear 13." The purpose of the seal 104 and the peripheral wall part 98 of the JP212 publication is to protect the clutch and bearings therein. Accordingly, as the JP974 publication, and JP212 publications are both concerned with protecting the clutch and bearings (which is the same purpose of the cap-shaped cover body in the '022 patent), it would have been obvious to one of ordinary skill in the art at the time the invention was made to include the cap-shaped cover body of the JP974 32

37 publication on the spinning reel of the JP212 publication and to replace the seal with a magnetic seal, as taught in the JP042 publication and as discussed above. (Springer Decl., 26.) 3. The spinning reel As shown above in FIG. 6 of the JP974 publication, the according to claim 2, seal is arranged on a surface substantially flush with the wherein the magnetic front surface of the cover body, as not to protrude over seal device is arranged the surface. If the seal of the JP974 publication was on a surface replaced with the magnetic seal of the JP042 substantially flush with publication it would extend perpendicularly with the the front surface of the axis of the driving part 13 and would therefore be cover body, as not to substantially flush with the front surface of the cover protrude over the body 33. (Springer Decl., 26.) surface. 4. The spinning reel according to claim 3, See above. wherein the magnetic seal device includes a magnet, a cylindrical magnetic body forming a magnetic circuit between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic ring. 5. The spinning reel according to claim 3 further comprising a rolling type one-way clutch allowing the rotation of the driving part in one direction and preventing the rotation of the driving part in the other direction, See above. wherein the magnetic body functions as an inner race of the one-way clutch. 6. The spinning reel according to claim 1, wherein the opening of the rotor has a rectangular shape. 33 See above.

38 7. The spinning reel according to claim 1, wherein the rotor includes a triangle-shaped notch opening. See above. 8. The spinning reel according to claim 1, wherein the rotor includes a pair of arms formed at opposite sides of the cylindrical portion of the rotor, and See above. a curved reinforcing member connecting the See above. cylindrical portion of the rotor and the pair of the arms. 9. A spinning reel for fishing comprising: a reel body including a front portion; The JP212 publication, the JP042 publication and the JP974 publication all teach spinning reels for fishing. As shown in FIG. 2 below, the JP212 publication discloses a reel body 12 that includes a front portion, a handle 32 that is provided in the reel body 12, a capa handle provided in the shaped cover body with a surrounding wall that is reel body; mounted in the front portion of the reel body (the capshaped cover body comprises the peripheral wall part a cap-shaped cover body 98 and the fixing component 102 see FIG. 4 below), a including a surrounding spool 50 on which a fishing line is to be wound, a rotor wall mounted in the 60 including a fishing line guide part 72a, a driving front portion of the reel part/drive shaft 22 that passes through the cover body body; and transmits the rotation of the handle to the rotor, and a support part (shown in green) that is provided in the a spool on which a front portion of the reel body and that supports the fishing line is to be driving part 22. The rotor 60 is rotated by the rotational wound; manipulation of the handle 32 to wind the fishing line on the spool 50. (Springer Decl., 26.) a rotor including a fishing line guide part, 34

39 the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool; a driving part passing through the cover body and transmitting the rotation of the handle to the rotor; a support part provided in the front portion of the reel body and supporting the driving part; and The '022 patent describes the cap-shaped cover body 50 as follows: "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50 having substantially a pipe shape (substantially a ring shape) as described below." Column 4, lines The cap-shaped cover body includes the peripheral wall part 98 and the fixing component 102, which clearly have a pipe shape or a ring shape. (Springer Decl., 26.) As shown in FIG. 6 of the JP974 publication below, the 35

40 spinning reel of the JP974 publication also includes a cap-shaped cover body (retaining component 33) that includes a surrounding wall. The cap-shaped cover body is mounted in the front portion of the reel body. The purpose of the cap-shaped cover body (or ring shaped cover body) 50 in the '022 patent is to protect the clutch. "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50. (Springer Decl., 26.) The purpose of the cap shaped cover body (retaining component 33) in the JP974 publication is to protect the clutch 30. The "Solution" section of the JP974 publication recites the following: "a sealing means 40, 41 to prevent the penetration of water into the inside of the reel body 1a where the bearing 11A or the unidirectional clutch 30 is arranged, that is situated at least in between the bores 33b for the retaining component 33 and the pinion gear 13 or the rotating component 8 that is unitized with the pinion gear 13." The purpose of the seal 104 and the peripheral wall part 98 of the JP212 publication is to protect the clutch and bearings therein. Accordingly, as the JP974 publication, 36

41 and JP212 publications are both concerned with protecting the clutch and bearings (which is the same purpose of the cap-shaped cover body in the '022 patent). (Springer Decl., 26.) a magnetic seal device mounted in the cover body and including a magnet, As shown below, the JP212 publication includes a seal arranged between the driving part (shown in green) and the support part (shown in orange). The seal in the JP212 application is positioned such that it surrounds the drive shaft 22 so as to prevent water from entering the clutch 82 and the bearings 46b therebehind. The seal is not a magnetic seal device. However, as shown below in FIG. 9 of the JP042 publication, the JP042 discloses a magnetic seal device 125 (and other magnetic seals, 53, 124 and 33a) that surrounds the spool shaft 16 and prevents water from entering the rotor 103, which houses the clutch 151 and the bearings 116a that support the pinion 112. (Springer Decl., 26.) 37

42 a cylindrical magnetic body forming a magnetic circuit between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic ring. As both seals serve the same function, preventing water from entering an opening through which a shaft extends so as to protect the clutch and bearings, it would have been obvious to one of ordinary skill in the art to replace the non-magnetic seal of the JP212 publication with a magnetic seal as taught in JP042. Furthermore, as discussed above in the Technical Background and State of the Art section, the 819 patent teaches that the non-magnetic seals in fishing reels can be interchanged with magnetic seals. (Springer Decl., 26.) There is not antecedent basis for the term "magnetic ring," and, therefore, claim 4 is invalid. However, it is believed that "magnetic ring" should be "magnetic body. (Springer Decl., 26.) The magnetic seal of the spinning reel embodiment of the JP042 publication is numbered 125. The poor drawings of the JP042 publication make it difficult to see the components of the magnetic seal. However, in paragraph [0055] the JP042 patent recites "Magnetic seal 125, which has a structure identical to magnetic seal 124, is disposed forward of bearing 135." Magnetic seal 124 is also difficult to see in the drawings. The JP042 patent recites in paragraph [0052] "This magnetic seal 124 is structured identically to that mounted on spiral shaft 26 of Implementation Mode 1, 38

43 and it provides a pair of the magnetic retention ring and magnetic fluid." Therefore, "Mode 1," which is shown below in FIG. 6 (only a portion of FIG. 6 is shown to concentrate on the magnetic seal). (Springer Decl., 26.) As is shown in FIG. 6, the magnetic seal device includes a magnet, a cylindrical magnetic body and magnetic fluid. A circuit is formed between the magnetic body and the magnet and magnetic fluid maintained between the magnet and the magnetic "body". (Springer Decl., 26.) 10. The spinning reel according to claim 9, wherein the magnetic seal device is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the As shown above in FIG. 2 of the JP212 publication, the seal is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. If the seal of the JP212 publication was replaced with the magnetic seal of the JP042 publication, because magnet seals have parallel poles, the seal would necessarily have to extend perpendicularly with the axis of the drive shaft 22 and would therefore be substantially flush with the front 39

44 surface. surface of the cover body. (Springer Decl., 26.) Furthermore, as shown below in FIG. 6 of the JP974 publication, the seal of the JP974 publication was replaced with the magnetic seal of the JP042 publication, because magnet seals have parallel poles, the seal would necessarily have to extend perpendicularly with the axis of the drive shaft 22 and would therefore be substantially flush with the front surface of the cover body 33. (Springer Decl., 26.) 11. The spinning reel according to claim 10 further comprising a rolling type one-way clutch allowing the rotation of the driving part in one direction and preventing the rotation of the driving part in the other direction, See above. wherein the magnetic body functions as an inner race of the one-way clutch. See above. 12. The spinning reel according to claim 9, wherein the rotor includes a pair of arms formed at opposite sides of the cylindrical portion of the rotor, See above. 40

45 and a curved reinforcing member connecting See above. the cylindrical portion of the rotor and the pair of the arms. Ground 3. Claims 1-3 and 5-8 are invalid under 35 U.S.C. 103(a) as being obvious over the 819 patent in view of the JP212 publication. (Springer Decl., 27.) Claim 1. A spinning reel for fishing comprising: Disclosure of the '819 patent and the JP212 publication The '819 patent and JP212 publication both teach spinning reels for fishing. (Springer Decl., 27.) a reel body including a front portion; As shown below in FIG. 2 of the '819 patent, the spinning reel of the '819 patent includes a reel body 2a that includes a front portion, a handle 1 (see FIG. 1) that is provided in the reel body 2a, a spool 4 on a handle provided in the which fishing line is to be wound, a rotor 3 that reel body; includes a cylindrical portion 30 that accommodates the front portion of the reel body 2a, and a fishing line guide part 41. (Springer Decl., 27.) a spool on which a fishing line is to be wound; a rotor that includes a cylindrical portion accommodating the front portion of the reel body and a fishing line guide part, 41

46 the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool, an opening being formed radially through the cylindrical portion of the rotor; In the spinning reel of the '819 patent, the rotor is rotated by the rotational manipulation of the handle to wind the fishing line on the spool. (Springer Decl., 27.) Column 7, lines recite "In the interior of the reel body 2a is a hollow as indicated in FIG. 2, and installed within the hollow are a rotor-drive mechanism 5 that rotates the rotor 3 by linkage to rotation of the handle assembly 1." (Springer Decl., 27.) As shown below in FIG. 3 of the JP212 publication, the JP212 publication teaches an opening 63 that is formed radially through the cylindrical portion (referred to as barrel 60A in the JP212 application) of the rotor 60. (Springer Decl., 27.) 42

47 The JP212 publication states in the "Solution" section that "barrel 60A has radial direction openings 63 situated on a peripheral wall part 64 surrounding the front part F of the reel body." (Springer Decl., 27.) Furthermore, in paragraph [0031], the JP212 publication states "it is possible to have a lightweight item with improved fishing operability with the openings 63, 71 formed on the periphery of the rotor 6, specifically the peripheral wall part 64 and the arms 70." This is the same purpose as the opening 3B in the rotor of the '022 patent. (Springer Decl., 27.) 43

48 a driving part transmitting the rotation of the handle to the rotor; a support part provided in the front portion of the reel body and supporting the driving part; and a magnetic seal device arranged between the driving part and the support part. A driving part/pinion gear 12 (shown in orange) is present in the '819 patent, as is shown in FIG. 2 below (only a portion of FIG. 2 is shown). The pinion gear transmits the rotation of the handle to the rotor. (Springer Decl., 27.) As shown below in FIG. 2 of the '819 patent, the '819 patent includes a support part (shown in green) provided in the front portion of the reel body that supports the driving part. (Springer Decl., 27.) As shown below in FIG. 2 of the '819 patent, the '819 patent includes a seal (shown in yellow) arranged between the driving part (shown in green) and the support part (shown in orange). (Springer Decl., 27.) 44

49 2. The spinning reel according to claim 1 further comprising a cap-shaped cover body including a surrounding wall mounted in the front portion of the reel body, wherein the magnetic seal device is mounted in a front portion of the cover body, and The seal is not a magnetic seal device. However, in column 18, lines 57-61, the '819 patent states "the types of sealing member are not limited to these, and may take any form as long as they seal the gaps. For example, labyrinth seals comprising grooves, and fluid seals employing magnetic fluids are included as sealing members." (Springer Decl., 27.) As shown below in FIG. 2 of the '819 patent, the spinning reel of the '819 patent includes a cap-shaped cover body (shown in the red square and referred to as the forward-projecting tubular portion 2c) including a surrounding wall mounted in the front portion of the reel body. See also FIG. 4. (Springer Decl., 27.) The seal 59 is mounted in the front portion of the cover body. The driving part 12 passes through the front portion of wherein the driving part the cover body. (Springer Decl., 27.) passes through the front portion of the cover body. 45

50 3. The spinning reel according to claim 2, wherein the magnetic seal device is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. 5. The spinning reel according to claim 3 further comprising a rolling type one-way clutch allowing the rotation of the driving part in one direction and preventing the rotation of the driving part in the other direction, As shown above in FIG. 2 of the '819 patent, the seal is arranged on a surface substantially flush with the front surface of the cover body, as not to protrude over the surface. Furthermore, if seal 59 was replaced with a magnetic seal, it would extend perpendicularly with the axis of the pinion gear 12 and would therefore be substantially flush with the front surface of the cover body. (Springer Decl., 27.) As shown in FIG. 2 of the '819 patent below, the spinning reel includes a rolling type one-way clutch that allows the rotation of the driving part 12 in one direction and prevents the rotation of the driving part in the other direction. The '819 patent also includes a seal (shown in yellow) (Springer Decl., 27.) wherein the magnetic body functions as an inner race of the oneway clutch. 46

51 As shown in FIG. 4 of the JP212 publication below, the spinning reel also includes a rolling type one-way clutch 82 that allows the rotation of the driving part in one direction and prevents the rotation of the driving part (shown in orange) in the other direction. The clutch includes an inner race/inside component 84 (shown in blue). (Springer Decl., 27.) If the rolling type one-way clutch of the '819 patent was replaced with the rolling type one-way clutch of the JP212 publication and the seal plate 59 of the '819 patent was replaced with a magnetic seal (as the '819 patent says is interchangeable with other seals), due to the positioning of the seal and the inner race/inside component 84, inner race/inside component 84 would function as the magnetic body of the one-way clutch. A purple rectangle has been inserted into FIG. 4 of the JP212 publication below to show where the magnetic seal would go to replace the seal 104. (Springer Decl., 27.) 47

52 6. The spinning reel according to claim 1, wherein the opening of the rotor has a rectangular shape. The JP212 publication teaches openings 63 in the rotor and shows them in FIGS. 3 and 6. The JP212 publication states in paragraph [0031] that "it is possible to have a lightweight item with improved fishing operability with the openings 63, 71 formed on the periphery of the rotor 6, specifically the peripheral wall part 64 and the arms 70." The '022 patent recites "the spinning reel for fishing according to this embodiment can reduce not only the weight of the rotor 3 (achieving the lightweight of the rotor 3) thanks to the opening 3B (the notch opening 3C)." Col. 8, lines The spinning reel according to claim 1, wherein the rotor includes a triangleshaped notch opening. As shown in FIG. 6 below, the JP212 publication teaches a triangle-shaped notch opening in the rotor. 48

53 Ground 4. Claims 9-10 are invalid under 35 U.S.C. 103(a) as being obvious over the 819 patent in view of the JP042 publication and the JP974 publication. (Springer Decl., 28.) Claim Disclosure of the '819 patent, the JP042 publication and the JP974 publication 9. A spinning reel for The '819 patent, JP042 publication and JP974 fishing comprising: publication all teach spinning reels for fishing. (Springer Decl., 28.) a reel body including a As shown in FIG. 1 below, the '819 patent discloses a front portion; reel body that includes a front portion, a handle that is provided in the reel body, a cap-shaped cover body with a handle provided in the a surrounding wall (shown in the red square) that is reel body; mounted in the front portion of the reel body, a spool on which a fishing line is to be wound, a rotor including a a cap-shaped cover body fishing line guide part, a driving part/drive shaft that including a surrounding passes through the cover body and transmits the wall mounted in the rotation of the handle to the rotor, and a support part front portion of the reel (shown in green) that is provided in the front portion of body; the reel body and that supports the driving part. The rotor is rotated by the rotational manipulation of the 49

54 a spool on which a fishing line is to be wound; handle to wind the fishing line on the spool. (Springer Decl., 28.) a rotor including a fishing line guide part, the rotor being rotated by the rotational manipulation of the handle to wind the fishing line on the spool; a driving part passing through the cover body and transmitting the rotation of the handle to the rotor; a support part provided in the front portion of the reel body and supporting the driving part; and The '022 patent describes the cap-shaped cover body 50 as follows: "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50 having substantially a pipe shape (substantially a ring shape) as described below." Column 4, lines The forward projecting tubular portion 2c of the '819 patent clearly has a pipe shape or a ring shape. (Springer Decl., 28.) As shown in FIG. 6 of the JP974 publication below, the spinning reel of the JP974 publication also includes a cap-shaped cover body that includes a surrounding wall. The cap-shaped cover body is mounted in the front portion of the reel body. (Springer Decl., 28.) 50

55 The purpose of the cap-shaped cover body (or ring shaped cover body) 50 in the '022 patent is to protect the clutch. "The rolling type one-way clutch 10 is surrounded, and thus protected, by a protection cover (ring-shaped cover body) 50." (Springer Decl., 28.) The purpose of the cap shaped cover body (retaining component 33) in the JP974 publication is to protect the clutch. The "Solution" section of the JP974 publication recites the following: "a sealing means 40, 41 to prevent the penetration of water into the inside of the reel body 1a where the bearing 11A or the unidirectional clutch 30 is arranged, that is situated at least in between the bores 33b for the retaining component 33 and the pinion gear 13 or the rotating component 8 that is unitized with the pinion gear 13." (Springer Decl., 28.) The purpose of the seal plate 59 of the '819 patent is to protect the clutch and bearings therein. "At the front of the one-way clutch 51 a rimmed sealing plate 59 for preventing liquids form seeping into the interior of the reel body 2a is fitted on the tubular portion 2c." (Springer Decl., 28.) 51