Ex Parte Hedtke

Patent Trial and Appeal Board

Aug 12, 2013

12173964 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSHUA HEDTKE
____________________

Appeal 2011-007296
Application 12/173,964
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007296
Application 12/173,964

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STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 1-53
under 35 U.S.C. § 103(a) as unpatentable over Dennert (US 6,846,018 B2;
iss. Jan. 25, 2005) and Brown (US 2007/0012500 A1; pub. Jan. 18, 2007).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Invention
Appellant’s claimed invention relates to motorcycle frames. Spec.
para. [0001]. Claim 22, reproduced below, is illustrative of the claimed
subject matter:
22. A motorcycle frame comprising:
a first frame portion including
a steering head;
at least one longitudinal frame
member extending rearwardly from the
steering head;
a first mounting portion coupled to
the longitudinal frame member;
a second mounting portion coupled to
the longitudinal frame member, the first and
second mounting portions having respective
inboard surfaces in facing relationship with
each other and respective outboard surfaces;
a second frame portion fastened to the first
frame portion, the second frame portion including
a first coupling portion engaged with
the outboard surface of the first mounting
portion; and
a second coupling portion engaged
with the inboard surface of the second
mounting portion.

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OPINION
Claims 22-28 and 48-53
Independent claim 22 is directed to a motorcycle frame that includes
first and second frame portions. The first frame portion includes first and
second mounting portions, and the second frame portion includes first and
second coupling portions. The frame portions are fastened together so that
the first coupling portion engages the outboard surface of the first mounting
portion, while the second coupling portion engages the inboard surface of
the second mounting portion. Independent claim 48 includes first and
second mounting portions and first and second coupling portions that engage
in like manner. In parity with the claim language, the Specification states
that mounting portion 106a is outboard-facing and its corresponding
coupling portion 106b is inboard-facing, while mounting portion 110a is
inboard-facing and its corresponding coupling portion 110b is outboard-
facing. Spec. para. [0033]; fig. 4. The inboard and outboard directions are
with respect to the longitudinal axis 242 of the frame 18. Id.
Therefore, independent claims 22 and 48 call for the first and second
coupling portions to be oriented one inboard-facing and one outboard-
facing, with respect to the longitudinal axis of the frame, for engaging the
first and second mounting portions.
The Examiner found that Dennert discloses the subject matter of
independent claim 22 and 48 except for two limitations: one, Dennert does
not explicitly disclose a removably mounted tail frame section (second
frame portion), and two, Dennert’s first and second coupling portions are not
oriented one inboard-facing and one outboard-facing for engaging the first
and second mounting portions. Ans. 4-9.
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The Examiner concluded that it would have been obvious to modify
Dennert so that the tail frame section is removable, as taught by Brown.
Ans. 7-8. The Examiner also concluded that it would have been obvious to
reorient Dennert’s first and second coupling portions so that one is inboard-
facing and one is outboard-facing, with respect to the longitudinal axis of the
frame, for engaging the corresponding first and second mounting portions.
Ans. 8-9. The Examiner provided three reasons that such modification of
Dennert’s coupling and mounting portions would have been obvious. Ans.
4-9. We consider the reference and then analyze the Examiner’s reasons.
Dennert discloses a motorcycle frame (cradle-style frame 14)
comprised of a base portion 42 and two removable portions 46, each formed
of tubular bodies 78 having open ends. Dennert, col. 2, ll. 54-55, 65-67; col.
4, ll. 17-19; figs. 1-3. Base portion 42 is joined to removable portions 46 at
joints 48. Dennert, col. 2, ll. 65-67; fig. 3. Joints 48 are comprised of male
end caps 80 and female end caps 79. Dennert, col. 4, ll. 19-24; figs. 3, 5.
Female end caps 79 are inserted into and welded to the free ends 58 of base
portion 42, and male end caps 80 are inserted into and welded to mating
ends 54 of removable portions 46, or vice versa. Dennert, col. 3, ll. 4-6; col.
4, ll. 19-24, 34-37; figs. 3, 5. Dennert depicts the protrusion 90 of each male
end cap 80 as outboard-facing with respect to the longitudinal axis of the
frame 14. Dennert, col. 4, ll. 29-30; fig. 3.
First, the Examiner reasons that Dennert’s disclosure of coupling
portions that are both outboard-facing, or alternatively both inboard-facing,
would have suggested to a person of ordinary skill in the art coupling
portions that are opposite facing (i.e., inboard- and outboard-facing), as
claimed. Ans. 11. To some extent, the Examiner overstates what the
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reference discloses. As discussed, supra, Dennert discloses a pair of
coupling portions that both face the same direction with respect to the
longitudinal axis of the frame (protrusions 90 of male end caps 80 when
inserted in removable portions 46). Dennert also discloses that alternatively
male end caps 80 may be inserted into base portion 42 and female end caps
79 may be inserted into removable portions 46; however, Dennert does not
disclose which direction the protrusions 90 of male end caps 80 will face
when configured. More importantly, we fail to see, and the Examiner fails
to convincingly explain, how coupling portions that each face the same way
with respect to the longitudinal axis suggests to a person of ordinary skill in
the art that the coupling portions could face in opposite directions with
respect to the longitudinal axis of the motorcycle frame. See App. Br. 12;
Reply Br. 4.
Second, the Examiner reasoned that the direction the coupling
portions face was an obvious matter of design choice. Ans. 8-9. As
acknowledged by the Examiner, the claimed structure permits the frame to
be assembled in a manner different from the manner of assembly for the
reference. See Ans. 8-9. Given this difference in function, the modification
is more than an obvious rearrangement of parts. See, e.g., In re Gal, 980
F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded
when claimed structure and the function it performs are different from the
prior art); see also App. Br. 10.
Third, the Examiner reasons that such modification would make the
frame so that, “the tail frame mounts can be mated to the corresponding first
frame mounts easily with simple movements (e.g. transverse to longitudinal
axis of the frame, the like those implied for mounting the original removable
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frame sections taught by Dennert) without requiring undue stress on or
deformation of the components.” Ans. 8-9. The Examiner did not find that
such a benefit was disclosed in either of the references. Nor did the
Examiner contend that it would have been a matter of common sense or was
within the knowledge of a person of ordinary skill in the art. The only
source we find for such added benefit is Appellant’s disclosure. Spec. para.
[0033]; see also App. Br. 10-12; Reply Br. 3.
Accordingly, we do not sustain the rejection of claims 22 and 48 or
their respective dependent claims 23-28 and 49-53.

Claims 13-21 and 39-47
Independent claim 13 is directed to a motorcycle frame that includes a
first frame portion and a second frame portion. The first frame portion
includes a first mounting portion with a recess and a second mounting
portion with a projection, and the second frame portion includes a first
coupling portion with a projection and a second coupling portion with a
recess. The projection of the first coupling portion is received in the recess
of the first coupling portion and the projection of the second mounting
portion is received in the recess of the second coupling portion. Claim 39 is
directed to a tail frame that is coupled to a main frame in the same manner
with regard to the coupling and mounting portions.
As discussed supra, Dennert’s first and second mounting portions
(male end caps 80) both have a projection (protrusion 90) and are included
on the first frame portion (removable portions 46), or alternatively, are both
included on the second frame portion (base portion 42). In modifying
Dennert so that male end cap is on the first frame portion and one is on the
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second frame portion, the Examiner relies upon the same three rationales for
this rejection as for the rejection of claims 22 and 48. See Ans. 4-8.
Therefore, the rationale here is flawed for the reasons explained in the
analysis of claims 22 and 48, supra. Consequently, we do not sustain the
rejection of independent claims 13 and 39 and their respective dependent
claims 14-21 and 40-47.

Claims 1-11 and 29-371
Claim 1 calls for a first and second frame, and the first mount of the
first frame is joined to the second mount of the second frame by a threaded
fastener. Therefore, claim 1 differs from independent claims 22 and 48 in
that claim 1 calls for a single connection between frame portions instead of
two connections, and claim 1 does not specify the direction the mounting
portions must face with respect to the longitudinal axis of the motorcycle
frame.
Appellant’s sole argument is that a person of ordinary skill in the art
would not have modified Dennert’s tail frame based upon Brown because of
the manner that force is transferred through Brown’s tail frame to the main
frame. App. Br. 16-17. As the Examiner correctly points out, the rejection
only relies upon Brown as disclosing that a tail frame may be removable
from the main frame, and does not rely upon Brown for the structure of the
tail frame. See Ans. 9-10; see also Ans. 7. For that reason, Appellant’s
argument is not persuasive because it is not responsive to the rejection as
articulated by the Examiner.

1 Appellant argues claims 1-11 and 29-37 as a group and we select
independent claim 1 as representative. App. Br. 16-17; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
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Consequently, we sustain the rejection of claims 1-11 and 29-37.

Claims 12 and 382
Claim 12 depends from claim 1, and recites, “wherein the second
mount is brought into engagement with the first mount, during assembly of
the second frame to the first frame, in a direction substantially transverse to
a longitudinal axis passing through the motorcycle.”
Appellant argues that the proposed combination does not disclose a
second mount brought into engagement with a first mount in the claimed
manner. App. Br. 17. Here claim 12 adds the product-by-process limitation
that the product, a motorcycle, is defined in terms of its method of
production (how the second mount engages the first mount). Whether the
claimed motorcycle is assembled by the second mount engaging the first as
claimed, or by some other method, the product is the same. Therefore, this
line of argument is unpersuasive.
Appellant repeats the argument used for the patentability of claim 1
that a person of ordinary skill in the art would not have modified Dennert’s
tail frame based upon Brown because of the manner that force is transferred
through Brown’s tail frame to the main frame. App. Br. 17; see also App.
Br. 16-17 (claim 1 argument). This argument is unpersuasive for the reasons
given in the analysis of claim 1, supra.
Accordingly, we affirm the rejection of claims 12 and 38.

2 Appellant argues claims 12 and 38 as a group and we select independent
claim 12 as representative. App. Br. 17; see 37 C.F.R. § 41.37(c)(1)(vii).
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DECISION
We affirm the Examiner’s decision to reject claims 1-12 and 29-38,
and we reverse with respect to claims 13-28 and 39-53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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