Ex Parte 6575310 et al

Patent Trial and Appeal Board

Dec 3, 2012

95001438 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,438 09/02/2010 6575310 EES03-00411 7697
24628 7590 12/04/2012
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/04/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

TITAN MARKETING, LLC
Requester, Respondent

v.

TC DEVELOPMENT AND DESIGN, INC.
Patent Owner, Appellant
____________________

Appeal 2012-004523
Reexamination Control 95/001,438
Patent US 6,575,310 C11
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Requester requests reconsideration under 37 C.F.R. § 41.79
(hereinafter "Req." or "Request") of our Decision mailed July 18, 2012
(hereinafter "Dec." or "original Decision"). The original Decision reverses
the Examiner's Final rejections of claims 1-8. We grant the Request to the

1 Issued June 10, 2003 to Chamoun (hereinafter "‘310 patent").
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Reexamination Control 95/001,438
Patent US 6,575,310 C1

2

extent that we consider the Requester's arguments infra, but decline to
modify the original Decision.
The Examiner's findings and rationale for the obviousness rejection
based on the combination of Mayfield2 or Jones3 with Hymer4 is set forth in
the record (RAN 5-6; Dec. 5). In the original Decision, we disagreed with
the Examiner's finding and the Requester's assertion that the wheel stop of
Hymer is a pivoting saddle or that it is pivotable (Dec. 6-7). We further
found the Examiner's reason for modifying Mayfield or Jones in view of
Hymer to "accommodate different size motorcycles" did not make sense
considering that the devices disclosed in Mayfield or Jones secure only the
front wheel of a motorcycle (Dec. 7-8). Thus, we found this stated reason
based on accommodation of different sized motorcycles not rational and
inadequate to support the conclusion of obviousness.
We also stated that as to accommodation of different sized motorcycle
wheels, both Mayfield and Jones already include features that allow such
accommodation (Dec. 8). The Requester argues that the Board erred in
concluding "that there is a lack of motivation to modify the devices of
Mayfield and Jones to achieve adjustability along the longitudinal direction."
(Req. 5; see also Req. 3). However, the Requester misconstrues the original
Decision in that we reversed the Examiner's rejection because we found the
proffered reasons to be "inadequately supported by rational underpinnings
and seemingly based on impermissible hindsight and thus, are insufficient to
support the conclusion of obviousness." (Dec. 9).

2 U.S. Patent No. 5,988,402.
3 U.S. Patent No. 3,430,983.
4 U.S. Patent No. 5,462,398.
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In addition, the secondary basis offered in support of the suggested
combination was that it "enables the motorcycle stand to accommodate …
different size motorcycle wheels." (RAN 6). This reason is merely
conclusory and does not address why one of ordinary skill in the art would
pursue such a modification of Mayfield or Jones in view of the teachings
therein that the disclosed devices already include features for
accommodation of different sized wheels (Dec. 8-9). In the Request for
Rehearing, the Requester focuses on the teachings of Mayfield and Jones as
to the need of accommodating different sized wheels as establishing
motivation to modify the devices of Mayfield and Jones (Req. 5). However,
the Requester again ignores the fact both Mayfield and Jones already purport
to solve this very need of accommodating different sized wheels as
explained in the original Decision (Dec. 8-9 and citations to disclosures
Mayfield and Jones therein).
In the Request, the Requester further argues that both Mayfield and
Jones illustrate their limitation in the ability to accommodate larger diameter
tires and that there is a maximum diameter that can be accommodated due to
the fixed distance between the pivot pin and the shoe that also secures the
tire (Req. 6). In particular, the Requester states that "any tire diameter
greater than the fixed distance … cannot be accommodated," so that it would
be obvious to make the pivoting saddle movable (Id. at 6-7). However, as
we stated, "[t]he record is insufficient to establish that devices of the type
disclosed in Mayfield and Jones that provide accommodation of wheels of
different sizes are inadequate for this very purpose." (Dec. 9). The claims
of the '310 patent are directed to a device for a motorcycle, as are the devices
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of Mayfield and Jones. Nothing in the record, such as objective evidence,
persuasively establishes that the devices of Mayfield and Jones are ill suited
to secure motorcycle wheels of various sizes which would include those of
larger diameters, so as to support the Requester's argument or the Examiner's
stated reason. We also observe that even the device resulting from the
modification suggested by the Requester will seemingly be limited to a
maximum diameter of a wheel which can be accommodated.
As to the Requester's assertion of obviousness in further combination
with the asserted admissions in the ‘310 Patent, the original Decision
adequately explains that "the cited statements of the '310 patent do not admit
that it would have been obvious to include a pivoting saddle that is
adjustably mounted to the frame." (Dec. 10). Whereas the Requester argues
that the claimed invention having the recited connection is obvious for other
reasons (Req. 8-9), we observe that these were not the bases on which the
claims of the '310 patent were rejected and appealed. Moreover, the
Requester appears not to appreciate that such assertions of obviousness must
be supported by reasoning with rational underpinnings to avoid reliance on
ex post reasoning, and that such reasoning is more persuasive when
bolstered by supporting evidence. See KSR Int’l v. Teleflex, Inc., 550 U.S.
398, 418 and 421 (2007)("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness")(citations omitted); "[F]actfinder should be
aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning."
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Finally, the Requester's "alarm" with respect to the amount of
disclosure regarding the adjustable connection within the ‘310 patent (Req.
10) was also not an issue on appeal and does not even appear to be within
the proper scope of the reexamination proceeding.

CONCLUSION
We discern no error in the original Decision, and thus, the Request for
Reconsideration is DENIED.

DENIED

rvb

PATENT OWNER:

HUSCH BLACKWELL LLP
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606

THIRD PARTY REQUESTER:

TAFT STETTINIUS & HOLLISTER LLP
ONE INDIANA SQUARE
SUITE 3500
INDIANAPOLIS, IN 46204-2023