Ex Parte 8151923 et alDownload PDFPatent Trial and Appeal BoardSep 25, 201595002011 (P.T.A.B. Sep. 25, 2015) Copy Citation 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. 95/002,011 06/05/2012 8151923 BRP 2R 9880 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 2015-004515 Inter partes Reexamination Control 95/002,011 Patent US 8,151,923 B1 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 8,151,923 B1 (hereinafter "the ’923 patent") issued April 10, 2012 to Giese from application No. 12/968,749, which is a divisional of application No. 11/709,421 that issued as Patent US 7,854,285 B1, which in turn, is the subject of inter partes Reexamination Control 95/002,010 and Appeal 2015-004514. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 2 STATEMENT OF THE CASE Claims 5–99 are subject to reexamination and stand rejected (Right of Appeal Notice 4 (hereinafter "RAN") PTOL-2066). Claims 1–4 are not subject to reexamination (id.). Claims 32–99 were added during the present reexamination (App. Br. 1). 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 (id.). 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 ’923 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 3 THE INVENTION The ’923 patent is directed to a rear suspension system for snowmobiles (Abs.). Figure 2 of the ’923 patent is reproduced below. Figure 2 of the ’923 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. 11–12; col. 4, ll. 35–36, 59–61; 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. 65–67; col. 5, ll. 4–14; 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. 16–18; 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. 19–22). Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 4 Claims 5, 19 and 25 are independent claims. Representative independent claim 5 reads as follows (Claims App., italics added): 5. A snowmobile having a coupled suspension system, 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 coupled 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 a first distance, the first distance being defined by at least one-quarter of the length of the front control arm, the linkage assembly including a coupling link having first and second spaced-apart ends, the second end of the coupling link being operably coupled to the front control arm at the first position, and at least a portion of the first end of the coupling link extending below the front control arm; and a shock absorber and pull rod each including first and second spaced-apart ends, the first ends of the shock absorber and pull rod being operably coupled to the rear control arm, the second ends of the shock absorber and pull rod being operably coupled to the first end of the coupling link, and the second end of the shock absorber being positioned coaxially with the second end of the pull rod. REJECTIONS The Examiner rejects the claims as follows: Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 5 1. Claims 5–99 under 35 U.S.C. § 103(a) as unpatentable over Ski-Doo 5 in view of Fecteau 6 (RAN 3–19). 2. Claims 19, 20, 22–26 and 28–31 under 35 U.S.C. § 103(a) as unpatentable over Fecteau (RAN 19–24). 3. Claims 66–99 under 35 U.S.C. § 103(a) as unpatentable over Ski-Doo in view of Fecteau, Yamaha 7 and Visscher 8 (RAN 24–25). 4. Claims 32–99 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (RAN 25–26). 5. Claims 25–31 under 35 U.S.C. § 103(a) as unpatentable over Ski-Doo in view of Fecteau, Yamaha and Visscher (RAN 26–28). 6. Claims 25, 26 and 28–31 under 35 U.S.C. § 103(a) as unpatentable over Fecteau in view of Yamaha and Visscher (RAN 28–29). 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 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 6 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 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 7 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: (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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 8 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. 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 9 assembly will be absorbing large impacts without having the compression stroke thereof bottom out. (Fecteau ¶ 15). 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 10 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 11 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 12 B. Discloses exploded views of the "Slide Rail Suspension RX10K, RX10RK, RX10RSK," the exploded views being reproduced below. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 13 (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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 14 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). Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 15 Rejection 1 Claims 5–99 stand rejected as unpatentable over the combination of Ski-Doo and Fecteau (RAN 3–19). The Examiner finds that Ski-Doo 9 discloses most of the limitations of the claims rejected 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. 7). Correspondingly, our reference to "Ski-Doo" herein encompasses the "Fig. 2" composite drawing as provided by Mr. Mallette. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 16 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 6–7). 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.). The Examiner finds that Ski-Doo fails to teach coaxial mounting of the ends of the shock absorber and the pull rods, but 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 these claims 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.). As to claims 7 and 22 that specifically recite that the distance is "one- half of the length of the front control arm," the Examiner sets forth similar Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 17 reasoning (RAN 8). The Examiner also rejects various other dependent claims finding the added limitations already disclosed in the Ski-Doo or Fecteau references (see generally RAN 8–9). As to claims 11 and 23, the Examiner finds that Ski-Doo has a rear loadcase with a progressive compression rate as recited (RAN 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 arguments to the contrary and the proffered evidence of secondary considerations, which are considered in concluding obviousness of the claims, but are addressed separately for clarity. We address the Patent Owner's arguments and evidence infra. Independent Claims 5, 19 and 25 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. 7–8; First Decl. Fugleberg ¶¶ 36–38). 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. 8; First Decl. Fugleberg ¶¶ 10–14, 19). Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 18 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. 9–10). 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. 18, item (14))." (App. Br. 10; see also Reb. Br. 8). In this regard, the Patent Owner asserts that the suggested combination requires "substantial reconstruction and redesign of the elements." (App. Br. 12, quoting In re Ratti, 270 F.2d 810, 813 (CCPA 1959); see also Reb. Br. 8–9). 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 19 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). 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 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 20 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. 10), 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 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 respect to Rejection 1, we observe that Visscher also discloses the benefits of a rising rate motion ratio in a snowmobile suspension (FF 4B). Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 21 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 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). 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 ’923 patent demonstrates that the design was "patentable, not obvious." (App. Br. 10–11). Specifically, the Patent Owner argues that the Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 22 Requester's patent filing "provides a better guide 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 10; 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. 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. 13–18; see also Reb. Br. 11–13). 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. 13) or that, in the suggested relocation, it is less of a concern (id. at 14). 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 15; 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. 16). 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 23 suspensions such as Ski-Doo." (Id. at 16, emphasis added). Specifically, the Patent Owner argues that when the suspension of Ski-Doo is modified for the configuration of claims 5, it results in a motion ratio that is "generally flat or falling throughout the movement of the suspension from the fully extended generally fully collapsed." (Id. at 16). In addition, the Patent Owner asserts that when the suspension of Ski-Doo is modified for the configuration of claims 19 and 25, the rear shock motion ratio "has a higher motion ratio towards the fully extended position of the suspension travel than Ski-Doo," and "the rear shock motion ratio is flatter than Ski-Doo as the suspension moves towards fully collapsed." (Id. at 17). 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). Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 24 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). The Patent Owner further argues selecting the distance, for example, one-quarter of the length of the front control arm as recited in the claims, 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. 18). 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 25 (First Decl. Mallette ¶ 16). Indeed, the Specification of the subject ’923 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. 16–18; Fig. 5). Thus, it is apparent that while the actual distance utilized 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. Claims 7 and 22 The Patent Owner further argues that dependent claims 7 and 22, which recite that the crank arm is interconnected to the front control arm at a distance "defined by one-half of the length of the font control arm," are also patentable (App. Br. 19). 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 completely regressive to thereby allow bottoming-out so that such configuration is less desirable than the unmodified Ski-Doo suspension (id. citing First Decl. Mallette ¶¶ 25, 26). However, these arguments are also unpersuasive for substantially the same reasons already discussed above. Claims 11 and 23 These claims recite that "a rear loadcase of the coupled suspension system has a progressive compression rate." (App. Br., Claims App.). The Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 26 Patent Owner argues that the Examiner's rejection does not rely on the combination of references, and instead, improperly relies on Ski-Doo alone (App. Br. 19). However, the record is clear that the Examiner rejected these claims as obvious over Ski-Doo in view of Fecteau, and the Examiner relies on Ski-Doo for the additionally recited limitations of claims 11 and 23, the Examiner referring to the noted pages of the Request to understand the recited rear loadcase limitation and how Ski-Doo discloses the limitation (RAN 8, citing Request, pgs. 179–186, 195–197). In this regard, the Examiner is not restricted to adopt the rejection as proposed by the Requester, but instead, can modify such rejections, or even enter rejections not proposed in the Request. The Patent Owner also argues that the rejection does not provide a measure of the rear loadcase, which is the external force required to deflect the rear portion of the suspension (App. Br. 19). The Patent Owner argues that the rejection provides a measure of an internal torque of Ski-Doo, that is, the rear spring angle as a function of suspension deflection, but that "rear loadcase cannot [be] a measure of the rear spring angle of a torsion spring" because the ’923 patent does not include rear torsion springs (id. at 19–20). These arguments are unpersuasive. The Specification of the ’923 patent does not define "rear loadcase" and the claims at issue also do not specify a particular type of spring or preclude the use of torsion springs. In addition, the general mechanical equivalence of coil springs and torsion springs would have been well understood by a person of ordinary skill in the art. The claims merely require the "rear loadcase" of the suspension system exhibit progressive compression rate. In addition, as explained by the Requester, Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 27 [w]hile the ’923 Patent does not identify the components that are encompassed by the "rear loadcase," those skilled in the art understand that this term refers to a reaction load of biasing members, such as springs, throughout the movement of the rear portion of the rear suspension 22 that is generally associated with the rear control arm 32. (Request 180). While a different parameter may have been used by the Requester in determining a rear loadcase, we are not persuaded that such determination is improper in establishing that the rear loadcase of the Ski-Doo suspension has a progressive compression rate. In this respect, we generally agree with the Requester that "[t]he Patent Owner's argument merely attacks the way in which the Requester verified that the prior art includes snowmobile suspensions having a progressive compression rate [], not the results obtained by the test." (Resp. Br. 10). Claims 46–51, 55, 56, 63, 64, 80–85, 89, 90, 97 and 98 These claims specifically require the shock absorber to be "centered between the front control arms." (App. Br., Claims App.). The Patent Owner argues that "the proposed combination utilizes an ‘offset arrangement’ wherein the rear shock absorber [] is not centered . . . in an attempt to reduce component interferences," so that the proposed configuration does not disclose, teach or suggest the limitation of these claims (App. Br. 20). The Patent Owner's argument is unpersuasive and misunderstands the rejection. The rejection is based on combination of Ski-Doo with the teachings of Fecteau, but is not premised on offsetting the position of the Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 28 rear shock absorber. The offsetting aspect was introduced by the Requester in rebuttal to the assertion to the Patent Owner's claims of interference. However, the prior art of record, beginning with Ski-Doo (FF 1) and Fecteau (FF 1, 2A; see also Fecteau Fig. 7) specifically applied in this rejection, clearly establishes that snowmobile suspension designs wherein the shock absorber is centered between the front control arms is conventional (see also FF 3A, 4A). Moreover, as generally discussed supra, the evidence indicates that the level of skill in snowmobile suspension design was very high and that a person of ordinary skill knew how to design a snowmobile suspension having numerous mechanically interconnected components of varying dimensions to thereby attain an operable suspension without interferences, and wherein the shock absorber was centered as conventionally known in the art. Claims 44, 45, 78 and 79 These claims similarly recite that "the coupling link is centered between the font control arms." (App. Br., Claims App.). The Patent Owner's arguments (App. Br. 20–21) are similar to those addressed above relative to centering of the shock absorber, and unpersuasive for substantially the same reasons. Evidence of Secondary Considerations 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" Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 29 suspension infringes at least independent claims 19 and 25 and has enjoyed commercial success and critical acclaim (App. Br. 28–30). 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 28–29). 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. at 29). 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 30–32). 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 ’923 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 30 suspension includes all of the limitations recited in the claims of the ’923 patent (App. Br. 28). 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 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. 28–29). 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 29 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. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 31 (Decl. Wolf ¶¶ 14, 15; see also id. ¶ 16 regarding Crossover segment; App. Br. 30). 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. 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 the independent claims 5, 19 and 25, and those dependent claims separately argued and discussed above, 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 the remaining dependent claims also subject to Rejection 1. Correspondingly, these claims also fall, and Rejection 1 of claims 5–99 as unpatentable over Ski-Doo in view of Fecteau is affirmed. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 32 Rejection 5 Claims 25–31 stand rejected as unpatentable over Ski-Doo in view of Fecteau, Yamaha and Visscher (RAN 26–28). Claims 26–31 ultimately depend from independent claim 25, which recites that the shock absorber has a cylinder that is "operably coupled to the rear control arm," and a rod that is "operably coupled to the coupling link." (App. Br., Claims App.). Thus, these claims specifically recite the orientation of the recited shock absorber. The Examiner finds that Ski-Doo and Fecteau teach a shock absorber arrangement that is reversely oriented from the orientation claimed (RAN 26). However, the Examiner concludes that "this difference is considered to be an obvious matter of design choice since the shock absorber would work equally well in either orientation." (Id.). In support, the Examiner further finds that both Yamaha and Visscher disclose snowmobile rear suspensions having the recited orientation (id.). The Examiner concludes that "it would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify Ski-Doo by reversing the orientation of the shock absorber in order to provide greater clearance adjacent the front control arm." (Id. at 26–27). The Patent Owner relies on the arguments discussed supra relative to Rejection 1, which are unpersuasive for the reasons already noted (App. Br. 21). The Patent Owner also argues that "in both Ski-Doo (Ski-Doo, pg. 296) and Fecteau (Fig. 9), the smaller diameter rod of the shock absorber is up near the track" instead of in the orientation claimed, and that "reversing the orientation of the shock such that the larger diameter cylinder is near the Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 33 track will result in the cylinder having an interference with the track," or potentially with the top of the rear control arm (App. Br. 21). We agree with the Examiner. The Patent Owner's arguments are fundamentally premised on bodily incorporation. As discussed above relative to Rejection 1, such arguments are unpersuasive and ignore the high level of skill in the art and the teachings therein. As the Examiner finds, both Yamaha (FF 3A, 3B) and Visscher (FF 4A) establish that the recited orientation of a shock absorber was well known in the art of snow mobile suspensions. Thus, taking into consideration the evidence of obviousness and non- obviousness, which includes the secondary considerations evidence discussed supra, we conclude that on balance, claims 25–31 are unpatentable over Ski-Doo in view of Fecteau, Yamaha and Visscher, and affirm Rejection 5. Rejection 3 Claims 66–99 stand rejected as unpatentable over Ski-Doo in view of Fecteau, Yamaha and Visscher (RAN 24–25). The Patent Owner relies on the same arguments set forth above relative to Rejections 1 and 5 in seeking reversal of Rejection 3 (App. Br. 22). Thus, because the Patent Owner's arguments relative to Rejections 1 and 5, and the proffered secondary considerations evidence are unpersuasive, we likewise affirm Rejection 3. Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 34 Rejections 2 and 6 Claims 19, 20, 22–26 and 28–31 stand rejected as unpatentable over Fecteau (RAN 19–20), and claims 25, 26 and 28–31 stand rejected as unpatentable over Fecteau in view of Yamaha and Visscher (RAN 28–29). However, these claims are subject to at least one ground of rejection which we have affirmed above. Correspondingly, Rejections 2 and 6, and arguments directed thereto, are moot and we decline to reach the same. Rejection 4 Claims 32–99 stand rejected as failing to comply with the written description requirement (RAN 25–26). However, these claims are subject to at least one ground of rejection based on the prior art, which we have affirmed above. Correspondingly, Rejection 4 and arguments directed thereto are moot and we decline to reach the same. ORDERS 1. Rejections 1, 3 and 5 are AFFIRMED. 2. Rejections 2, 4 and 6 are 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 Appeal 2015-004515 Reexamination Control 95/002,011 Patent US 8,151,923 B1 35 United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED PL Initials: Ssc Third Party Requester: Jeffrey D. Karceski Thomas, Karceski & Karmilovich, PC 888 16 th Street N.W. Suite 600 Washington, D.C. 46204 Patent Owner: Faegre Baker Daniels LLP-Polaris 300 N. Meridian Street Suite 2700 Indianapolis, IN 46204 Copy with citationCopy as parenthetical citation