Ex Parte HedtkeDownload PDFPatent Trial and Appeal BoardAug 12, 201312173964 (P.T.A.B. Aug. 12, 2013) Copy Citation 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 ____________________ 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 2 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. Appeal 2011-007296 Application 12/173,964 3 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. Appeal 2011-007296 Application 12/173,964 4 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 Appeal 2011-007296 Application 12/173,964 5 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 Appeal 2011-007296 Application 12/173,964 6 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 Appeal 2011-007296 Application 12/173,964 7 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). Appeal 2011-007296 Application 12/173,964 8 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). Appeal 2011-007296 Application 12/173,964 9 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 Klh Copy with citationCopy as parenthetical citation