Ex Parte 7854285 et al

Patent Trial and Appeal Board

Sep 25, 2015

95002010 (P.T.A.B. Sep. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/002,010 06/05/2012 7854285 BRP 1R 5901
93175 7590 09/28/2015
Faegre Baker Daniels LLP-Polaris
300 N. Meridian Street
Suite 2700
Indianapolis, IN 46204
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/28/2015 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
____________________

BOMBARDIER RECREATIONAL PRODUCTS INC.
1

Requester, Respondent

v.

POLARIS INDUSTRIES INC.
2

Patent Owner, Appellant
____________________

Appeal 2015-004514
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3

Technology Center 3900
____________________

Before JAMES T. MOORE, STEVEN D.A. McCARTHY and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
The corporate name of the Requester appears in some documents filed in
the proceeding as "BRP Inc."
2
Polaris Industries Inc. is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner (hereinafter "App. Br.") 1).
3
Patent US 7,854,285 B1 (hereinafter "the ’285 patent") issued December
21, 2010 to Giese from application No. 11/709,421, which is the parent of
divisional application No. 12/968,749 that issued as Patent US 8,151,923
B1, which in turn, is the subject of inter partes Reexamination Control
95/002,011 and Appeal 2015-004515.
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STATEMENT OF THE CASE
Claims 10–17 of the ’285 patent are subject to reexamination and
stand rejected (Right of Appeal Notice
4
(hereinafter "RAN") PTOL-2066).
Claims 1–9 and 18–26 are not subject to reexamination (id.). The Patent
Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the Examiner's
rejections with respect to all of the rejected claims (App. Br. 1). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 315.
The Patent Owner relies on its Appeal Brief, Rebuttal Brief
(hereinafter "Reb. Br."), two declarations of Michael Fugleberg, a
declaration of Christopher Wolf and exhibits attached thereto in support of
patentability. The Requester relies on its Respondent Brief and three
declarations of Bertrand Mallette in support of the Examiner's rejections. In
addition, an oral hearing was conducted with the legal representatives of the
parties at the Patent Trial and Appeal Board on August 5, 2015, a transcript
having been entered into the record on September 1, 2015.
We are also informed that the ’285 patent is currently involved in
litigation captioned Polaris Industries Inc. v. BRP U.S. Inc. and Bombardier
Recreational Products Inc., 12-CV-01405 (D. Minn.), which has been
stayed (App. Br. 1).
We AFFIRM.

4
The Examiner's Answer incorporates the RAN by reference. Hence we cite
to the RAN herein.
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THE INVENTION
The ’285 patent is directed to a rear suspension system for
snowmobiles (Abs.). Figure 2 of the ’285 patent is reproduced below.

Figure 2 of the ’285 patent reproduced above shows a profile view of
endless belt assembly 14 having a coupled suspension system 22, which
includes front control arm 30, shock absorber 38 and pull rod 40 (col. 3, ll.
8–9; col. 4, ll. 32–33, 56–59; Fig. 2). The lower ends of the shock absorber
38 and pull rod 40 are coupled to linkage assembly 47 having link 48 that is
pivotably coupled to bracket 50 mounted on cross shaft 52 (col. 4, ll. 62–64;
col. 5, ll. 1–11; Fig. 2). "[B]racket 50 may be coupled to front link[] 30 at
any position between lower pivot point 43 and cross shaft 42" at the ends of
control arm 30 (col. 5, ll. 13–15; Fig. 2). In the preferred embodiment,
bracket 50 is coupled to front link 30 "at a position spaced-apart from lower
pivot point[] 43 by at least one-quarter of the length of front link[] 30."
(Col. 5, ll. 16–19).
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Representative independent claim 10 reads as follows (Claims App.,
italics added):
10. A snowmobile having a coupled suspension, the
snowmobile comprising:
a chassis having a front and rear end;
a lower rail;
a front control arm defining a first length extending
between first and second spaced-apart ends, the front control
arm positioned adjacent to the chassis front end, the front
control arm pivotally coupled to the chassis on the first end and
pivotally coupled to the lower rail on the second end;
a rear control arm positioned adjacent to the chassis rear
end and pivotally interconnected to the chassis and lower rail;
a linkage assembly supported by the front control arm at
a first position between the first and second ends of the front
control arm, the first position being spaced-apart from the
second end of the front control arm by at least a first distance,
the first distance being defined by one-quarter of the length of
the front control arm, the linkage assembly including a
coupling link having first and second spaced-apart ends; and
a shock absorber and pull rod each including first and
second spaced-apart ends, the first ends interconnected to the
rear control arm, the second ends operably coupled to the
linkage assembly, and wherein the first end of the coupling link
is pivotally interconnected to the second end of the shock
absorber, the second end of the coupling link is interconnected
to the front control arm at the first position, and the second end
of the pull rod is connected to the coupling link at a position
between the first and seconds of the coupling link.

Independent claim 16 is similar to claim 10 but claim 16 recites
"the second end of the shock absorber being positioned coaxially with
second end of the pull rod."

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REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103(a) as follows:
1. Claims 10, 11 and 14–17 unpatentable over Ski-Doo
5
in view of
Fecteau
6
(RAN 3–16, 23–24).
2. Claims 11–14 unpatentable over Ski-Doo in view of Fecteau,
Yamaha
7
and Visscher
8
(RAN 16–18).
3. Claims 14–16 unpatentable over Ski-Doo in view of Fecteau and
Visscher (RAN 18–20).
4. Claim 16 unpatentable over Fecteau (RAN 20–23).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The
Court further explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique

5
Ski-Doo 2004 Shop Manual, REV Series (2003).
6
Patent Application Publication No. US 2005/0016784 A1, pub. Jan. 27,
2005.
7
Yamaha RX-1 Mountain /ER Warrior 2005 Service Manual (2004).
8
Patent Application Publication No. US 2006/0169510 A1, pub. Aug. 3,
2006.
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has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). As to the level of
skill, the cited prior art can be considered as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); Union Carbide Corp. v. American Can Co., 724 F.2d 1567,
1573 (Fed. Cir. 1984).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). It is not necessary that the
inventions of the references must be physically combinable to render
obvious the invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983). "Combining the teachings of references does not involve an
ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968
(CCPA 1973).

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Ski-Doo is a shop manual for REV Series snowmobiles, and
discloses a suspension in Section 08, Subsection 02 ("SC-10 III
SUSPENSION"), reproduced below:
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(Ski-Doo, pg. 295).
Two figures in Subsection 02 (SC-10 III SUSPENSION) of
Ski-Doo reproduced above illustrate exploded views of a rear
suspension for a snow mobile showing the various components
of the suspension.

2. Fecteau is directed to a snowmobile suspension (see Title), and:
A. Discloses a prior art rear suspension for a snowmobile in Figure
2 reproduced below.
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Figure 2 reproduced above shows a perspective view of a
conventional rear suspension assembly of a snowmobile
(Fecteau ¶ 20). Although not specifically discussed in Fecteau,
the illustrated conventional rear suspension assembly includes
front control arm 28, shock absorber 48 and a pull rod (not
numbered), the lower ends of shock absorber 48 and the pull
rod being coupled to cross shaft 32 at the end of the control arm
(Fecteau, Fig. 2).

B. In summarizing its invention, discloses:
The suspension assembly of the present invention
advantageously provides the first or front shock absorber
assembly in an operation condition with a rising rate so
that in most instances the first or front shock absorber
assembly will be absorbing large impacts without having
the compression stroke thereof bottom out.
(Fecteau ¶ 15).

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C. In Figure 3, discloses a snowmobile suspension in accordance
with one embodiment of the invention, Figure 3 being
reproduced below.

Figure 3 reproduced above shows a side elevational view of a
rear suspension assembly 132 including front suspension arm
154, shock absorber assembly 196 and link rod 188. (Fecteau
¶¶ 21, 33, 35, 47; Fig. 3). Link rod 188 and shock absorber 196
are connected to front rocker arm 184 at a same location, front
rocker arm 184 being attached to side frame assembly 144 via
cross bar 186 (Fecteau ¶¶ 43, 47).
D. In Figure 8, discloses a snowmobile suspension in accordance
with another embodiment of the invention, Figure 8 being
reproduced below.
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Figure 8 reproduced above shows a partial side elevational view
of a snow mobile suspension in accordance with another
embodiment in which rocker arm 184 is attached via cross bar
186 to front suspension arm 154 a spaced distance from the end
of front suspension arm 154 (Fecteau ¶¶ 26; 53; Fig. 8).
In this embodiment, link rod 188 and shock absorber 196 are
connected to front rocker arm 184 at the same location (id.).
E. In discussing Figure 8, states:
Referring to FIG. 8 and in accordance with another
embodiment of the present invention, a portion of a rear
suspension assembly 132A is illustrated. In the rear
suspension assembly 132A, the front rocker arm 184 is
attached at its middle portion to the front suspension
arms 154, rather than to the slide frame assembly 144 as
shown in FIG. 3. In this embodiment, the cross bar 186
which pivotally connects the front rocker arm 184
extends between and is attached at their opposed ends to
a lower portion of the respective front suspension arms
154. Other components are arranged similarly to the rear
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suspension assembly 132 of FIG. 3, and will not be
redundantly described.
(Fecteau ¶ 53).

3. Yamaha is a Service Manual for Yamaha RX-1 Mountain /ER
Warrior snowmobiles, and:
A. Discloses an illustration of a rear suspension for a snow mobile
in "Slide Rail Suspension RX10K, RX10RK, RX10RSK," the
illustration being reproduced below.

(Yamaha, pg. 33).
Slide Rail Suspension RX10K, RX10RK, RX10RSK of
Yamaha, reproduced above, illustrates a perspective view of a
rear suspension for a snow mobile.
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B. Discloses exploded views of the "Slide Rail Suspension
RX10K, RX10RK, RX10RSK," the exploded views being
reproduced below.

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(Yamaha, pgs. 34, 35).
The exploded views of the Slide Rail Suspension RX10K,
RX10RK, RX10RSK of Yamaha, reproduced above, illustrate
the various components of the suspension system.

4. Visscher is directed to snowmobile track suspension (see Title),
and:
A. Discloses a snowmobile suspension in accordance with one
embodiment in Figures 2 and 3, which are reproduced below.

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Figures 2 and 3, reproduced above, show a perspective view
and a side cross-sectional view, respectively, of the snowmobile
track suspension, each view illustrating various components of
the disclosed snowmobile track suspension (Visscher ¶¶ 31,
32).
B. In discussing the background of the invention, states that "[a]
rising rate motion ratio is one in which the shock speed
increases as the suspension compresses at a constant rate. This
setup is typically found in sport snowmobiles and provides
excellent control at high speeds and excellent bottoming
protection." (Visscher ¶ 7).
C. States that the disclosed invention provides "a U-shaped motion
ratio profile during compression" such that the suspension
exhibits an initial falling rate, a constant rate and a rising rate as
the suspension is progressively compressed (Visscher ¶¶ 28, 51,
52; see also Fig. 7).

ANALYSIS
The Patent Owner disagrees with the Examiner's findings and
conclusion in its appeal for the reasons set forth in its briefs. We address the
various arguments of the Patent Owner infra, but in an order that slightly
differs from the order presented. Only those arguments actually made by the
Patent Owner have been considered and any arguments not made are
deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).

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Rejection 1
Claims 10, 11 and 14–17 stand rejected as unpatentable over the
combination of Ski-Doo and Fecteau (RAN 3–16, 23–24). The Examiner
finds that Ski-Doo
9
discloses most of the limitations of independent claim 10
except for the limitation requiring that the linkage assembly be supported by
the front control arm at a distance that is one-quarter of the length of the
front control arm (id. at 5–6; see also FF 1). The Examiner finds that
Fecteau discloses a coupled snowmobile suspension system like that of Ski-
Doo (RAN 6), and in the embodiment shown in Figure 8:
. . . Fecteau teaches that the crank arm 184 can be supported at
different positions and, specifically, that the crank arm can be
supported by the front control arms 154 at a position that is
spaced a distance upwardly from the lower ends of the front
control arms 154.
(Id. at 6; see also FF 2C–2E).

9
In relying on Ski-Doo, the Examiner relies on the composite drawing
identified as "Fig. 2" in the First Declaration of Mallette dated May 29,
2012, which was submitted with the Inter Partes Request for Reexamination
of June 5, 2012, as well as the drawings in Ski-Doo reproduced above (RAN
4–5; First Decl. Mallette ¶ 11). Mr. Mallette declares that the composite
drawings submitted, including "Fig. 2," were prepared to show how the parts
illustrated in the Ski-Doo Manual appear when assembled (First Decl.
Mallette ¶ 9). Mr. Mallette further declares that the composite drawing "Fig.
2" was prepared from the engineering drawings for the SC-10(III) rear
suspension, that it provides an accurate representation of the assembled
components, and that the proportions are to scale (First Decl. Mallette ¶ 11).
The Patent Owner does not dispute the accuracy of the submitted "Fig. 2"
composite drawing of the SC-10 (III) suspension, or object to the Examiner's
reliance thereon, referring to "Fig. 2" in its briefing (see App. Br. 4).
Correspondingly, our reference to "Ski-Doo" herein encompasses the "Fig.
2" composite drawing as provided by Mr. Mallette.
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Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art to have supported the
crank arm of Ski-Doo via the front control arm at a position that is spaced a
distance upwardly away from the lower rails (RAN 7). The Examiner
reasons that such positioning would have been obvious in order to reduce the
possibility of snow and ice inhibiting the operation of the crank arm, and to
provide a "suspension with the desired characteristics, e.g., overall height,
suspension stiffness, etc." (Id.). The Examiner further concludes that the
selection of the actual spacing distance of one-quarter of the length of the
front control arm would have been an obvious matter of design choice that
was within the level of ordinary skill in the art (id.).
As to claim 16, which differs from claim 10 in that it requires coaxial
mounting of the ends of the shock absorber and the pull rods, the Examiner
further finds that Figures 3 and 5–8 of Fecteau discloses such coaxial
mounting (id. at 7; see also FF 2D). Based on this finding, the Examiner
concludes that further modifying Ski-Doo to coaxially mount the ends of the
shock absorber and the pull rods to the crank arm as recited in claim 16
would have been obvious to one of ordinary skill in the art, such positioning
"simplif[ying] the mounting by allowing a common pivot member to secure
both the shock absorber and the pull rods to the crank arm." (RAN 7). The
Examiner further concludes that such a change would have been obvious "in
order to provide the suspension with the desired characteristics, e.g., overall
height, suspension stiffness, etc." (Id. at 7–8).
We find no error in the findings of the Examiner and generally agree
with the Examiner's conclusions of obviousness, despite the Patent Owner's
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arguments to the contrary and the proffered evidence of secondary
considerations. We address the Patent Owner's arguments and evidence
infra.
The Patent Owner argues that combining Ski-Doo with the teachings
of Fecteau by moving the crank arm (i.e., linkage assembly) so that the
crank arm is supported by the front control arm at a distance that is one-
quarter of the length of the front control arm renders Ski-Doo inoperable due
to interference between the crank arm and the front shock cross bar (App.
Br. 5–6; First Decl. Fugleberg ¶¶ 38–41). In this regard, the Patent Owner
states that it obtained the Ski-Doo snowmobile having the SC-10 III
suspension and created accurate computer models that allowed the Patent
Owner to position the crank arm to the location required by the claims to
determine that the noted interference exists (App. Br. 4; First Decl.
Fugleberg ¶¶ 10–14, 19).
The Requester responds that a person of ordinary skill in the art would
have known how to modify Ski-Doo to accommodate the teachings of
Fecteau, and the proposed offsetting shock absorber (Second Decl. Mallette
¶¶ 20–34). The Patent Owner asserts that the noted interference still remains
and points out that Declarant Mr. Mallette moved various components (App.
Br. 6–7). The Patent Owner argues that "the Requester has been unable to
demonstrate a functional suspension of the proposed combination. In fact,
the Requester and the Examiner admit that interferences still exist in the
proposed combination, even with all of the changes, deletions, and
rearrangements made. (RAN, p. 15, item (14))." (App. Br. 7; see also Reb.
Br. 9). In this regard, the Patent Owner asserts that the suggested
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combination requires "substantial reconstruction and redesign of the
elements." (App. Br. 10, quoting In re Ratti, 270 F.2d 810, 813 (CCPA
1959); see also Reb. Br. 10–11).
The Requester disagrees stating that there is only one position where
there is a nominal interference of 0.3 mm, which is between the rear shock
and the front shock cross bar that can be avoided "by reducing the size of the
rear shock eyelet or moving the position of the front shock cross bar at least
0.3 mm from its current position." (Third Decl. Mallette ¶¶ 23–25; Resp. Br.
4–5). The Requester further states that the deleted limiter strap was
unnecessary and snowmobile systems having one limiter strap are well
known in the art (Third Decl. Mallette ¶¶ 53–57).
The arguments of the parties as to existence or non-existence of
interference in the Ski-Doo's snowmobile suspension when the linkage
assembly is supported by the front control arm at a distance required by the
claim are generally misdirected in view of the obviousness analysis
prescribed by the Supreme Court. Graham v. Deere, 383 U.S. 17–18. The
scope and content of the prior are extensive (FF 1–2E). As found by the
Examiner (RAN 5–6), the difference between the claimed subject matter and
prior art Ski-Doo is that the linkage assembly of Ski-Doo is not supported by
the front control arm at a distance of one-quarter of the length of the front
control arm but instead, is supported at the end of the front control arm.
However, as also found by the Examiner, Fecteau teaches "that the crank
arm can be supported by the front control arms 154 at a position that is
spaced a distance upwardly from the lower ends of the front control arms
154," and discloses such a configuration in Figure 8 (id. at 6; FF 2D, 2E).
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Further, as evidenced by the prior art of record, the level of skill in the
art was very high (see generally, FF 1–2E; see also FF 3A–4C). Okajima,
261 F.3d at 1355; Union Carbide, 724 F.2d at 1573. The prior art of record
demonstrates that a person of ordinary skill in the art of snowmobile
suspension design knew how to design a snowmobile suspension having
numerous mechanically interconnected components of varying dimensions
to thereby attain an operable suspension having desired characteristics
including suspension stiffness characteristics. In this regard, Fecteau
specifically discloses a snowmobile suspension that exhibits a rising rate to
allow for absorption of large impacts without bottoming out the suspension
(FF 2B).
10

Whereas the Patent Owner bases its arguments for patentability on
existence of interference in the Ski-Doo suspension and that "the Requester
has been unable to demonstrate a functional suspension of the proposed
combination" (App. Br. 7), these arguments are essentially premised on
bodily incorporating the features of Fecteau into the snowmobile suspension
of Ski-Doo. Indeed, we note that Patent Owner's declarant Mr. Fugleberg
declares that he "did not modify any other connections between the
components of the Unmodified SC-10 III Suspension." (First Decl.
Fugleberg ¶ 19). However, bodily incorporation or combination of specific
structures is not the test for obviousness, but rather, "the test is what the

10
During the Oral Hearing, the representatives of both parties agreed that
desirability of rising ration motion ratio in snowmobile suspensions was well
known in the art. Indeed, while not relied upon for deciding the appeal with
respect to Rejection 1, we observe that Visscher also discloses the benefits
of a rising rate motion ratio in a snowmobile suspension (FF 4B).
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combined teachings of the references would have suggested to those of
ordinary skill in the art." Keller, 642 F.2d at 425; Nievelt, 482 F.2d at 968.
Nothing in the record indicates that such teachings of Fecteau would
have been implemented by a person of ordinary skill into the Ski-Doo
suspension design without consideration of their impact on the operation and
suspension characteristics resulting therefrom. To the contrary, it is readily
apparent that the level of skill was high in this art, and a person of ordinary
skill would have viewed the snowmobile suspension as a system of
interconnected components that function together so that if one component
was changed, the impact of this change would have been evaluated and the
suspension system further modified and optimized to avoid interference and
attain the desired characteristics of the suspension such as its stiffness, based
on the suspension designer's goals (see generally, First Decl. Mallette ¶ 19;
Second Decl. Mallette ¶¶ 15, 16, 19, 40, 48).
The teachings of Ski-Doo and Fecteau are clear, and the noted
difference between the suspension design disclosed in Ski-Doo and the
claimed invention is suggested by Fecteau. Fecteau discloses a snowmobile
suspension design that is similar to that of Ski-Doo (compare FF 2C with FF
2A and "Fig. 2" composite drawing of First Decl. Mallette ¶ 11), and also
includes an embodiment with respect to its claimed invention wherein the
crank arm is supported on the front control arm at a spaced distance from the
lower end of the control arms 154 (FF 2D, 2E). While the specific distance
of one-quarter length of the front control arm is not disclosed by Fecteau,
such positioning would have been an obvious design choice dependent on
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desired suspension design parameters or characteristics such as suspension
stiffness (see RAN 7).
The Patent Owner's arguments premised on the assertion that the
suspension of Ski-Doo would not function due to interference improperly
focuses on incorporating the disclosed feature of Fecteau into the
snowmobile suspension of Ski-Doo, rather than what these references teach
to one of ordinary skill in the art. In this regard, as noted, "[c]ombining the
teachings of references does not involve an ability to combine their specific
structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Similar analysis
is applicable to claim 16, Fecteau specifically disclosing the coaxial
mounting of the ends of the shock absorber and the pull rod as recited in
Figures 3 and 5–8 (FF 2D; see also RAN 7).
The Patent Owner also asserts that the fact that the Requester also
sought to patent a "suspension design that is nearly identical to that claimed"
in the subject ’285 patent demonstrates that the design was "patentable, not
obvious." (App. Br. 7–8). Specifically, the Patent Owner argues that the
Requester's patent filing "provides better evidence for true state-of-the-art in
2006 than the Requester's declarations in this reexamination proceeding,"
and contradicts Requester's current position of obviousness (id. at 8–9; Reb.
Br. 2–8). This line of reasoning is also unpersuasive. Patentability and
obviousness are legal conclusions based on underlying facts, the most
objective and persuasive facts here residing in the actual prior art of record.
Prior opinions and actions of the Requester do not materially impact the
above analysis which is based on the prior art of record.
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The Patent Owner also challenges the adequacy of the Examiner's
articulated reasons for the combination, asserting that the articulated reasons
are inadequate and conclusory (App. Br. 11–12; see also Reb. Br. 12–14).
Specifically, the Patent Owner argues that "[t]he Examiner has not presented
any rationale [sic, rational] underpinning to support movement of the crank
arm to reduce the possibility that snow and ice will inhibit the operation of
the crank arm" (App. Br. 11) or that, in the suggested relocation, it is less of
a concern (id. at 11–12). The Patent Owner also argues that "overall height"
is not changed because height in Ski-Doo is "based on the lengths and angles
of the front and rear control arms." (Id. at 13; First Decl. Fugleberg ¶ 17).
However, the analysis set forth above focused on suspension stiffness,
which, the Patent Owner concedes, is impacted by supporting the crank arm
via the front control arm (App. Br. 10). The other reasons are not material to
the analysis set forth above.
The Patent Owner asserts that if the suspension of Ski-Doo is
modified in view of Fecteau as suggested, the resulting suspension stiffness
would "not [be] in a manner that would be considered to be desirable for
suspensions such as Ski-Doo." (Id. at 14, emphasis added). Specifically, the
Patent Owner argues that when the suspension of Ski-Doo is modified for
the configuration of claim 10, it results in a higher motion ratio than the
unmodified version at the fully extended position, and the motion ratio is
flatter as it moves toward a fully collapsed position (id. at 14). In addition,
the Patent Owner asserts that when the suspension of Ski-Doo is modified
for the configuration of claim 16, the rear shock motion ratio "is generally
falling throughout the movement of the suspension from fully extended to
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generally fully collapsed" which results in harsher ride over small bumps
and reduction in handling over large bumps compared to the unmodified
version (id. at 15).
However, these arguments are unpersuasive because again, they are
principally based on bodily incorporation of Fecteau into the suspension of
Ski-Doo. As already discussed, the level of skill in this art was high and a
person of ordinary skill would not have made such a modification without
considering the impact to the suspension characteristics, including
suspension stiffness. In addition, the prior art of record indicates different
motion ratio characteristics may be more desirable depending on the
suspension designers' objectives and the intended application, and
implementing such suspension systems were within the skill of those in the
art (compare FF 2B, 4B, 4C). This makes sense in view of differing
markets/applications for snowmobiles.
Moreover, we further observe that "case law does not require that a
particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide the motivation for
the current invention." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
The fact that Ski-Doo's suspension is less desirable when modified to
incorporate (bodily or otherwise) the teachings of Fecteau is not dispositive
of patentability or non-obviousness. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (using as evidence of obviousness, a reference that
described a certain embodiment as inferior but still usable).
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The Patent Owner further argues selecting the distance, for example,
one-quarter of the length of the front control arm as recited in claim 10, is
not a matter of design choice because:
(1) there are an infinite number of actual distances to which the
crank arm may be moved which precludes a rejection based on
obvious design choice, (2) the discussed inoperability of the
proposed combination precludes a rejection based on obvious
design choice, and (3) the actual distance the crank arm is
moved up the front control arm significantly alters the rear
shock motion ratio and hence the suspension performance.
(App. Br. 16).
However, points "(2)" and "(3)" have already been sufficiently
addressed above and are unpersuasive. As to point "(1)," as already noted,
Fecteau teaches that the crank arm 184 can be supported by the front control
arms 154 at a position that is spaced a distance upwardly from the lower
ends of the front control arms 154 (FF 2D, 2E). As to the actual distance
from the end of the control arm at which the crank arm is supported, in
reference to Figures 5 and 6, Mr. Mallette states:
[o]nce a snowmobile suspension designer decides to attach the
shock absorber and other components to the front control arm,
the exact location of the attachment is at the discretion of the
designer. There is no particular importance or significance to
any particular attachment point at the infinite number of
positions between the top and bottom ends of the front control
arm.
(First Decl. Mallette ¶ 16).

Indeed, the Specification of the subject ’285 patent itself states "[i]n
other embodiments, bracket 50 may be coupled to front links 30 [i.e., control
arm] at any position between lower pivot pin 43 and cross shaft 42." (Col. 5,
ll. 13–15; Fig. 5). Thus, it is apparent that while the actual distance utilized
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impacts the operation and/or characteristics of the snowmobile suspension,
the determination of this distance was within the skill of snowmobile
suspension designers, i.e., a design choice which the suspension designer
would have made based on the desired suspension characteristics.
The Patent Owner further argues that dependent claim 17, which
recites that the crank arm is interconnected to the front control arm at a
distance "defined by one-half of the length of the control arm," is also
patentable (App. Br. 17). The Patent Owner argues that at such a position,
the component interference in the snowmobile suspension of Ski-Doo is
even more severe, and its motion ratio becomes regressive to thereby allow
bottoming-out so that such configuration is less desirable than the
unmodified Ski-Doo suspension (id.). However, these arguments are also
unpersuasive for substantially the same reasons already discussed above.
The Patent Owner also asserts that it has submitted evidence of
secondary considerations that demonstrates patentability of the claims.
Specifically, the Patent Owner argues that the Requester's "rMotion"
suspension infringes claim 10 and has enjoyed commercial success and
critical acclaim (id. at 20–21). The Patent Owner also argues that Patent
Owner's "RUSH" rising-rate suspension introduced a couple years before the
Requester's rMotion suspension was brought to market, enjoyed commercial
success and increased market share of the Requester's product (id. at 21–24).
The Patent Owner asserts that when the infringing rMotion was brought to
market, the sales and market share of snowmobiles having the RUSH rising-
rate suspension declined (id.).
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The Examiner does not find the proffered evidence persuasive, and
agrees with the Requester's position that the proffered evidence is
unpersuasive because the evidence, inter alia: does not establish nexus
between the claims and the asserted commercial success; does not establish
that the Requester's rMotion snowmobile suspension embodies the apparatus
recited by the claims on appeal; does not establish copying; does not show
that commercial success was due to the merits of the claimed invention; only
provides gross sales figures with general allegations of increased sales and
market share; and fails to establish that the problem solved was long-felt but
unresolved (RAN 24–26). We generally agree with the Examiner.
The Patent Owner's proffered evidence of secondary considerations is
in the form of a Declaration of Christopher Wolf and various exhibits
attached thereto. While the Patent Owner asserts that the Requester's
rMotion suspension copies and infringes the suspension claimed in the ’285
patent, the basis of these assertions is a photograph showing a side view of
the rMotion suspension, without any detailed analysis of how the rMotion
suspension includes all of the limitations recited in the claims of the ’285
patent (App. Br. 21). Such general assertions that are not substantiated by
detailed analysis are of little probative value in establishing the requisite
nexus.
The Patent Owner also asserts that there was a long-felt need and
industry acclaim (id.). Establishing long-felt need requires objective
evidence showing existence of a persistent problem recognized by those of
ordinary skill in the art for which a solution was not known. In re Gershon,
372 F.2d 535, 539 (CCPA 1967). However, the Patent Owner's own
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discussion in its brief appears to establish that the "Pro-Ride" suspension
also satisfied the long-felt need for a rising-rate snowmobile suspension
(App. Br. 21). Thus, a solution for addressing the suspension issues by
providing a rising-rate snowmobile suspension appears to have been known.
As to industry acclaim, the evidence of record does appear to indicate
that the snowmobile suspension rMotion did garner praise in the industry
(id. at 22 and Exhibits referred to therein). However, without demonstrating
a proper nexus between the rMotion snowmobile suspension and the claimed
invention, the evidence of industry acclaim is also of little probative value.
As to commercial success, Mr. Wolf declares:
14. After two years in the market with its new rising-rate suspension,
Polaris saw its market share rise significantly in the Performance
segment. In contrast, during that same period, before the
introduction of the rMotion, Ski-Doo's market share in the
Performance segment decreased.
15. Following the introduction of the rising-rate rMotion suspension,
Ski-Doo's market share in the Performance segment increased and
Polaris's market share decreased.
(Decl. Wolf ¶¶ 14, 15; see also id. ¶ 16 regarding Crossover segment;
App. Br. 22–23).
However, ignoring for the moment the lack of requisite nexus
discussed above, the assertions of gain in market share attained by the
rMotion suspension lack supporting detail such as the magnitude of the gains
over the pertinent time period. The proffered evidence also lack supporting
detail as to the magnitude of the loss in market share that Polaris
experienced. Such general assertions of commercial success are
unpersuasive to establish non-obviousness of the claims at issue.
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Therefore, because the evidence proffered by the Patent Owner as to
secondary considerations is of limited persuasive value, when considered in
conjunction with the entirety of the record, we are not persuaded that the
Examiner erred in rejecting independent claims 10 and 16, and dependent
claim 17 as obvious over the combination of Ski-Doo and Fecteau. The
claimed invention is a predictable variation of the Ski-Doo suspension which
utilizes the technique of supporting the linkage assembly on the front control
arm as taught and suggested by Fecteau. KSR, 550 U.S. at 417.
The Patent Owner does not present persuasive arguments or evidence
as to the patentability of dependent claims 11, 14 and 15 also subject to
Rejection 1. Correspondingly, these claims also fall, and Rejection 1 of
claims 10, 11 and 14–17 as unpatentable over Ski-Doo in view of Fecteau is
affirmed.

Rejection 2
Claims 11–14 stand rejected as unpatentable over Ski-Doo in view of
Fecteau, Yamaha and Visscher (RAN 16–18). The Patent Owner relies on
the same arguments set forth above relative to Rejection 1 in seeking
reversal of Rejection 2 (App. Br. 17). Thus, because the Patent Owner's
arguments relative to Rejection 1 are unpersuasive, we likewise affirm
Rejection 2.
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Rejection 4
Claim 16 also stands rejected as unpatentable over Fecteau, the
Examiner finding that Fecteau discloses most of the limitations of claim 16
(RAN 20–21), and further finding that:
. . . Fecteau teaches that the crank arm 184 can be supported at
different positions and, specifically, that the crank arm can be
supported by the front control arms 154 at a position that is
spaced a distance upwardly from the lower ends of the front
control arms.
(Id. at 21).
The Examiner acknowledges that Fecteau fails to disclose that the
distance is one-quarter of the length of the front control arms, but reasons
that such positioning would have been obvious in order, inter alia, to
provide a "suspension with the desired characteristics, e.g., . . . suspension
stiffness, etc." (Id.). The Patent Owner's arguments against this rejection
are substantively the same as those submitted with respect to Rejection 1
(App. Br. 18–20). Thus, for the same reasons already discussed supra
relative to Rejection 1, we do not find the Patent Owner's arguments and
proffered evidence persuasive. Correspondingly, we also affirm Rejection 4.

Rejection 3
Claims 14–16 also stand rejected as unpatentable over Ski-Doo in
view of Fecteau and Visscher (RAN 18–20). However, these claims are
subject to at least one ground of rejection which we have already affirmed
above. Correspondingly, Rejection 3 and arguments directed thereto are
moot and we decline to reach the same.
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ORDERS
1. Rejections 1, 2 and 4 are AFFIRMED.
2. Rejection 3 is moot.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED

PL Initials:
mls

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Third Party Requester:

Jeffrey D. Karceski
Thomas, Karceski & Karmilovich, PC
536 Granite Avenue
Richmond, VA 23226

Patent Owner:

Faegre Baker Daniels LLP-Polaris
300 N. Meridian Street
Suite 2700
Indianapolis, IN 46204