Richard Larry. Sunsdahl et al.

Patent Trials and Appeals Board

May 22, 2020

2018000857 (P.T.A.B. May. 22, 2020)

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.
14/478,689 09/05/2014 Richard Larry SUNSDAHL PLR-15-1688.02P-01-US-e 6410
93175 7590 05/22/2020
Faegre Drinker Biddle & Reath LLP - Polaris
300 N. Meridian Street
Suite 2500
Indianapolis, IN 46204
EXAMINER
VANAMAN, FRANK BENNETT
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
05/22/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
inteas@faegredrinker.com
sue.meyer@polaris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD LARRY SUNSDAHL, AARON DAVID DECKARD,
MARCUS JOHANNES TULLEMANS, JASON CARL PLUGGE,
ALAN A. MEYER, and BRIAN MICHAEL SAFRANSKI
Appeal 2018-000857
Application 14/478,689
Technology Center 3600
Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Polaris Industries Inc.,
appeals from the Examiner’s decision to reject claims 22–28, 30–38, and
40–53. Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Polaris
Industries, Inc. Appeal Br. 3.
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We AFFIRM and enter NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).2
CLAIMED SUBJECT MATTER
The claims are directed to “side-by-side all terrain vehicles having at
least a pair of laterally spaced apart seating surfaces.” Spec. ¶ 2. Claim 22,
reproduced below, is illustrative of the claimed subject matter:
22. An all-terrain vehicle, comprising:
a frame, comprising a front frame portion, a mid frame
portion and a rear frame portion, the rear frame portion
comprising a lower rear frame portion and an upper rear frame
portion;
a front suspension coupled to the front frame portion;
at least two front wheels coupled to the front suspension;
a rear suspension coupled to the rear frame portion;
at least two rear wheels coupled to the rear suspension;
a cab intermediate the front and rear wheels;
a seating area within the cab and supported by the mid
frame portion, comprising side by side seats each having a seat
back and a seat bottom;
an engine supported by the rear frame portion, the engine
positioned rearwardly of the seating area, and each seat bottom
having a seating surface with a low point of the seating surface
being below a top of the engine, the spaced-apart seating surfaces
including a driver seating surface and a passenger seating surf
ace;
a fuel tank being positioned underneath one of the seat
bottoms;

2 We note that under 37 C.F.R. § 42.73(d)(3), “[a] patent applicant or owner
is precluded from taking action inconsistent with the adverse judgment,
including obtaining in any patent . . . [a] claim that is not patentably distinct
from a finally refused or canceled claim,” such as those that were at issue in
IPR2014-01427. Appellant should consider this provision when prosecution
is re-opened in this matter.
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a transmission comprising a continuously variable
transmission positioned rearwardly of the seating area;
the front and rear wheels being drivingly coupled to the
transmission;
the lower rear frame portion supporting at least one of the
engine and transmission rearward of the seating area; and
outermost points of the vehicle in a width-wise direction
define a width of less than 54 inches.
REFERENCES
The prior art relied upon by the Examiner is:
Vittone
Hill
Hickey
Enokimoto
Furuhashi
US 3,366,411
US 3,407,893
US 3,709,314
US 5,251,713
US 5,327,989
Jan. 30, 1968
Oct. 29, 1968
Jan. 9, 1973
Oct. 12, 1993
July 12, 1994
Nash
Hypes
Bataille
US 2004/0195797 A1
US 2005/0173180 A1
US 2006/0180383 A1
Oct. 7, 2004
Aug. 11, 2005
Aug. 17, 2006

REJECTIONS
Claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Hypes and Furuhashi.
Non-Final Act. 2.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hypes, Furuhashi, and Nash. Non-Final Act. 5.
Claims 26 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hypes, Furuhashi, and Bataille. Id.
Claims 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hypes, Furuhashi, and Vittone. Non-Final Act. 6.
Claims 43 and 48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey and Enokimoto. Non-Final Act. 7.
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Claims 44–47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Hypes. Non-Final Act. 9.
Claim 49 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Bataille. Non-Final Act. 10.
Claims 50 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Vittone. Id.
Claims 22, 27, 28, 30, 31, 33, 34, and 36 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, and
Furuhashi. Non-Final Act. 11.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Nash. Non-Final Act.
12.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Hill. Id.
Claims 26 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Bataille. Non-Final
Act. 13.
Claims 35, 37, 38, and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hickey, Enokimoto, Furuhashi, and Hypes. Id.
Claims 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Vittone. Non-Final
Act. 14.
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OPINION
Obviousness
Hypes/Furuhashi – Claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53
Appellant argues claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and
53 as a group.3 We select claim 22 as representative. Claims 23, 27, 28, 30,
31, 34–38, 43–48, 52, and 53 stand or fall with claim 22. See 37 C.F.R.
§ 41.37(c)(iv). The Examiner finds that Hypes teaches the majority of
features recited in claim 22, but fails to teach that “outermost points of the
vehicle in a width-wise direction define a width of less than 54 inches” and
“a fuel tank being positioned underneath one of the seat bottoms.” See Non-
Final Act. 2–4. The Examiner reasons that it is desirable for an off-road
vehicle to have a width permitting use of known trails that were 50 or 54
inches wide. Id. at 3. The Examiner elaborates that the Honda Foreman and
Hart’s Hunter are examples of vehicles that illustrate the desirability of such
off-road use. Ans. 4. As for the fuel tank location, the Examiner finds that
“Furuhashi . . . teach[es] that it is well known to provide a vehicle with a
seat . . . and . . . a fuel tank . . . beneath the seat.” Non-Final Act. 4.
Appellant argues that the Examiner’s reasoning for modifying Hype’s
teachings to have the recited width is “not supported by actual evidence.”
Appeal Br. 23; see also Reply Br. 2 (“the Examiner still provides no

3 Appellant references certain other claims involved in the rejection, but
those statements do not rise to the level of separate arguments. For example,
Appellant states, generally, that “[e]ach of the claims discussing width is
separately appealed hereby (claims 22, 27, 31, 43, 48),” and simply
reproduces the language of claim 43 (Appeal Br. 25), which does not
constitute separate argument. See 37 C.F.R. § 41.37(c)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
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evidence”). Appellant goes on to point out that the Honda Foreman is a
straddle-type ATV with a single seat that sits above the engine and Hart’s
Hunter has a side-by-side configuration with the seats above the engine.
Reply Br. 2.
Appellant’s argument that the Examiner has not provided “actual
evidence” to support the reason for combining the references is not
persuasive because the law does not require “actual evidence.” What is
required is that the Examiner articulate reasoning with a rational
underpinning to support the conclusion of obviousness. See KSR, 550 U.S.
at 418 (“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Manual of Patent
Examining Procedure (MPEP) § 2144.06 (8th Ed., Rev. 9, Aug. 2012). The
Examiner has provided reasoning with a rational underpinning by explaining
that because trails were known to be 50 or 54 inches wide, it was desirable
to configure vehicles to fit on those trails. Non-Final Act. 3. Nothing in
Appellant’s argument undermines this reasoning. Further, Appellant’s
argument is not persuasive because the comments regarding the Honda
Foreman and Hart’s Hunter are inapposite. The Examiner relies on these
references to illustrate the desirability of an off-road vehicle that fits trails
that are 50 or 54 inches in width, not for disclosure of any of the limitations
of the claimed subject matter.
Also regarding rationale, Appellant argues that the Examiner’s reason
for combining the references is hindsight because the source of that
information is Appellant’s Specification. Appeal. Br. 24. It is
impermissible hindsight to imbue the person of ordinary skill in the art with
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knowledge that is not shown in the prior art. See W.L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). That is not the
case here. The Specification discloses, as background, that most side-by-
side all-terrain vehicles (ATVs) have a width of at least 54 inches and most
parks have a maximum trail width of about 50 inches. Spec. ¶ 3. This
background disclosure reflects what was known in the art. Consequently,
the Examiner’s reasoning is not impermissible hindsight because it does not
imbue the person of ordinary skill with knowledge that was not shown in the
prior art. Stated in a positive sense, the Examiner only attributes knowledge
of the prior art to the person of ordinary skill in the art. Given Appellant’s
argument, it is undisputed that these references show that narrow ATV’s
(those having a width of 50 or 54 inches), which include side-by-side
ATV’s, were known in the art.
In further support of the rejection rationale, the Examiner points out
that “it is well held that the adjustment of dimensions or scale of a device,
absent a positive teaching that such an adjustment cannot be made or is
expressly shown as being prohibited, falls well within the skill level of the
ordinary practitioner.” Ans. 2. Appellant does not effectively counter this
finding. In fact, Appellant never states what supposed challenges prohibit
such narrowing other than to label various features as width-impacting. In
addition, Appellant never points out any specific hurdle they overcame in
designing a vehicle having a narrow width and the supposedly width-
impacting features, nor does Appellant explain any specific solution, other
than to assert that they were the first to put all of the claimed features into a
narrow ATV.
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As an example, Appellant points out that achieving the claimed side-
by-side seating and seat bottom below the top of the engine “has an impact
on a needed width of the vehicle.” Appeal Br. 23. This is presumably so
because once the seats are lowered below the top of the engine, various
components that would normally run beneath the seat must be
accommodated in different ways that previously led to vehicles wider than
50 or 54 inches. Appellant does not explain, however, nor does the
Specification detail, any particular solutions to these problems.
Appellant further contends that the Examiner “continues to attempt to
stuff additional width-impacting components into Hypes while continuing to
state that the width is a feature that can just be chosen and implemented
without consideration of the vehicle more generally.” Id. Appellant,
however, does not explain how such consideration would present
engineering challenges that could not be overcome through the ordinary skill
in the art. Appellant also contends that fitting the claimed components into a
vehicle having a width of no greater than 50 or 54 inches is not an obvious
variation. Appellant even goes so far as to argue that the record is devoid of
“any rear-engine vehicle having powered front wheels with side-by-side
seating where a width of 54 inches or less was achieved.” Appeal Br. 25.
This is basically an assertion that the Examiner did not show the claimed
subject matter was anticipated. Such a contention carries little weight given
the rejection is based on obviousness.
Generally, a change in the size or the dimensions of an apparatus is
not a patentable distinction. See e.g., In re Rose, 220 F.2d 459, 463 (CCPA
1955) (“the size of the article under consideration . . . is not ordinarily a
matter of invention”), Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed.
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Cir. 1984) (where the only difference between the prior art and the claims
was a recitation of relative dimensions of the claimed device and a device
having the claimed relative dimensions would not perform differently than
the prior art device, the claimed device was not patentably distinct from the
prior art device).
In sum, without any explanation of what specific problems arise and
what the solutions are to such problems, Appellant’s labeling of various
features as width-impacting amounts to nothing more than attorney
argument. By not identifying in the Specification any particular solution to
the purported problems associated with the recited width limitations,
Appellant, itself, implicitly acknowledges that there is no particular
challenge in designing a side by side ATV meeting these width limitations.
See 35 U.S.C. § 112, first paragraph (“The specification shall contain a
written description of the invention . . . to enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and
use the same.”). “The test of enablement is whether one reasonably skilled
in the art could make or use the invention from the disclosures in the patent
coupled with information known in the art without undue experimentation.”
U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Here, because
that information is not provided in the Specification, Appellant must be
relying on the information being known in the art in order to comply with
the enablement requirement.
Appellant also contends that the Declaration of Dr. John Moskwa
shows the lack of a reasonable expectation of success. Appeal Br. 25–29.
Dr. Moskwa testifies that vehicle design is not a matter of routine and
common substitution; rather, modification to one component has a cascade
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effect on the rest of the system. Appeal Br. 26–27 (citing Moskwa Dec. 10).
Dr. Moskwa adds that creation of a vehicle with a significantly lower center
of gravity than prior art ATVs created the framework to permit making a
narrower (50 or 54 inch) ATV because the lower center of gravity permitted
more stable cornering. Appeal Br. 27–28 (citing Moskwa Dec. 20–21). We
appreciate, and agree with, the contention that vehicle design is a process
where modification of one component impacts other components and
performance. Yet, Appellant’s very general contention addresses all design
changes and does not persuasively explain why the proposed modification in
particular lacks a reasonable expectation of success.
Nor is the contention regarding a low center of gravity persuasive.
Appellant contends that the claimed narrow width is only possible with a
low center of gravity, yet claim 22, itself, undermines that assertion in that
claim 22 does not require a low center of gravity. Further, we agree with the
Examiner, and Appellant does not dispute, that Hart’s Hunter is a side-by-
side ATV having a width of 50 inches, and there is no evidence in the record
that Hart’s Hunter had a stability problem. Ans. 5–6; see also Reply Br. 3
(pointing out that Hart’s Hunter differs in some respects from the claimed
subject matter, but making no contentions regarding stability). Because the
Moskwa Declaration relies mainly on unclaimed features, we do not find the
evidence persuasive of Examiner error.
Regarding the recited fuel tank location, the Examiner reasons that it
would have been obvious to position the tank underneath one of the seat
bottoms as claimed because it would provide compact storage of the fuel
source, permitting other vehicle spaces to be used for carrying cargo rather
than storing fuel. Non-Final Act. 4. Appellant urges that such a position
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would raise the seat, and it is a generic motivation that supports placing a
fuel tank anywhere. Appeal Br. 29. We agree with the Examiner that the
proffered rationale is not generic. Rather, Furuhashi specifically illustrates a
fuel tank below a seat. Ans. 7; Furuhashi, 12:23–26, Fig. 19, element 120.
Appellant’s assertion that placing the fuel tank under a seat comes
with the tradeoff of raising the seat does not negate the proffered rationale.
See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(“a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.”). Appellant simply points out a negative aspect without weighing
it against the benefits. See generally Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
Appellant has not demonstrated error in the rejection of claim 22
regarding the prior art showing each limitation or in the reason for
combining the references. Before making a conclusion on obviousness, we
consider Appellant’s arguments and evidence regarding objective indicia of
nonobviousness. Appellant makes arguments regarding commercial success,
industry praise, and copying.
To be relevant, secondary evidence of non-obviousness must be
commensurate in scope with the claimed invention. In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). There must be a nexus between the merits of
the claimed invention and the evidence of secondary considerations. In re
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GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining non-obviousness. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
The burden of proving commercial success (and other types of
secondary considerations) during prosecution is on the applicant. See In re
Huang, 100 F.3d 135, 139–140 (Fed. Cir. 1996) (“In the ex parte process of
examining a patent application . . . the PTO lacks the means or resources to
gather evidence which supports or refutes the applicant's assertion that the
sales constitute commercial success.”); see also In re DBC, 545 F.3d 1373,
1384 (Fed. Cir. 2008). The burden of proving a nexus between the
secondary considerations and the merits of the claimed invention during
prosecution is also on the applicant or patent owner. Huang, 100 F.3d at
140 (“In sum, Huang simply has not carried his burden to prove that a nexus
existed between any commercial success and the novel features claimed in
the application.”). “For objective evidence of secondary considerations to
be accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) (internal citations omitted) (emphasis in
original). “Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” Id. (emphasis in original).
That is, the evidence of secondary considerations cannot be due to what is
already known in the art.
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Appellant contends that the evidence provided “show[s] the
commercial success of the vehicles that embody the claims of U.S. Patent
8,596,405, which are the same vehicles that embody the claims of the
present application.” Appeal Br. 30; see also id. at 32 (“while Dr. Jarosz
shows a nexus between the success and the elements of the claims of the
’405 Patent, many of those same claim elements exist in the present
application and the nexus between the success and the present application is
also apparent”). Initially, we note that the evidence of secondary
considerations submitted in this appeal was ultimately unpersuasive in the
proceeding in which it was submitted for U.S. Patent 8,596,405 (“the ’405
patent”), even with a presumption of nexus. See IPR2014-001427, Paper
77.4 The only meaningful differences between the claims at issue in the
’405 patent determined unpatentable after considering the evidence of
secondary considerations and claim 22 in this appeal are the recitation of the
particular vehicle width and fuel tank position. That is, the only purportedly
novel features of claim 22 are the particular vehicle width and fuel tank
location.
Appellant contends that “Dr. Jarosz establishes a nexus between the
commercial success and the claims at issue by referring to a January 20,
2007 review of the Polaris RZR vehicle by Dave Beckstrom.” Id. at 32.
Mr. Beckstrom’s review, however, is not evidence of commercial success
that is tied to any particular feature of the claims, let alone the purportedly
novel features of claim 22. In fact, Appellant offers no argument or
evidence suggesting that the recited vehicle width or fuel tank location are

4 That decision is final and has not been appealed by the Patent Owner.
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responsible for any of the alleged commercial success. Rather, by
Appellant’s own admission, the alleged commercial success is due to the
unpatentable combination of features recited in the ’405 patent. That is,
Appellant is essentially arguing that claim 22 is patentable based on the
commercial success of a combination of elements already determined to be
unpatentable. Appellant cannot argue patentability based on the
combination of features recited in the claims from the ’405 patent, which
were cancelled in IPR2014-01427. See 37 C.F.R. § 42.73(d)(3).
Dr. Jarosz declares that in 2008 when the North American Industry
was down 23 percent to that point in the year, Polaris’s business grew 22
percent due to strength in high-margin product lines, including the side-by-
side Ranger RZR. Appeal Br. 30; Jarosz Decl. ¶ 58. Dr. Jarosz states only
that the Ranger was a product line that led to 22 percent growth for Polaris,
but does not quantify what portion of that growth is attributable to the
Ranger RZR. See Ans. 9 (noting the lack of market share data). Dr. Jarosz
also stated that Polaris’s side-by-side sales “materially” outpaced the
industry while the industry was in a market downturn in 2008 and also in
2010. Appeal Br. 31; Jarosz Decl. ¶¶ 59–60. Dr. Jarosz does not quantify
what portion of Polaris’s side-by-side sales are attributable to the Ranger
RZR. See Ans. 9 (noting that the portion of side-by-side sales attributable to
the Ranger is not identified).
Dr. Jarosz states that in October 2007, ATV 4-Wheel Action reported
that the Ranger RZR would walk all over competition like the Yamaha
Rhino because the RZR was narrower, handled better, and had a low center
of gravity. Appeal Br. 31; Jarosz ¶ 62. Handling and a low center of gravity
are not claimed features. Although claim 22 recites a width of 54 inches, the
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comparison to the Rhino is of little value without knowing the width of the
Rhino. Further, Appellant provides no explanation as to how that width is
tied to the alleged commercial success.
Dr. Jarosz states that ATV 4-Wheel Action reported that Polaris
redefined the sport UTV category with introduction of the Ranger RZR 800
4x4. Appeal Br. 31; Jarosz Decl. ¶ 63. Although redefining a product
category is praise and suggests commercial success, it is not quantifiable.
For example, the comment does not provide statistical sales data in terms of
total sales in dollars or market share. In sum, Dr. Jarosz’s Declaration
supports a general assertion that the Ranger RZR achieved some commercial
success, but the Declaration lacks the specificity needed to put that success
in context.
As noted above, Appellant also submits the Declaration of Dr. John J.
Moskwa, which states, inter alia, that Polaris invented a unique ATV system
that “resulted in a side-by-side vehicle with an extremely low center of
gravity while still placing some components under the seats. The low center
of gravity was the result of the particular system design that Polaris
invented,” namely “by placing the engine behind the seats” and locating “the
seat bottoms below the top of the engine.” Moskwa Dec. ¶ 42. Even with
this Declaration evidence, Appellant does not provide any explanation as to
how the design itself was innovative other than to point out that it provides a
low center of gravity.
Nothing in the claims, however, requires a low center of gravity.
Essentially the only requirement related to a low center of gravity is having
the seat pan below the top of the engine, but because of the generic nature of
the remainder of the limitations, this could be achieved simply by raising the
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engine rather than lowering the seats. In such an example, the vehicle would
not have the low center of gravity touted by Dr. Moskwa. It might also
provide room to accommodate features Appellant describes as width-
impacting. Because the Declaration relies mainly on unclaimed features, we
do not find the evidence persuasive.
As with the Moskwa Declaration, the Jarosz Declaration mainly touts
the important feature of low center of gravity. Jarosz Dec. ¶ 31. Likewise,
Rintamaki touts both the low center of gravity and trail compliant width.
Rintamaki ¶ 4. Again, because nothing in the claims actually requires a low
center of gravity and because Appellant does not explain any specific
innovation to overcome the width issue, we do not find this evidence
persuasive. As to the commercial success touted by Rintamaki, again much
of this is tied to the RZR having a low center of gravity, which is not a
claimed feature. Id. at ¶ 12.
With respect to the alleged industry praise, much of that evidence
merely touts the Ranger RZR generally without respect to any specific
feature, let alone claimed features. The little praise that is tied to specific
features is directed toward the low center of gravity. See, e.g., Jarosz Dec.
¶¶ 62, 70. As with commercial success, evidence of industry praise is only
relevant when it is directed to the merits of the invention claimed. See
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006).
Accordingly, the alleged industry praise is weak evidence of patentability.
As to copying, Appellant lists five claimed features allegedly found in
Arctic Cat’s purportedly copied vehicle, but provides no analysis by
showing the actual vehicle and how the alleged features are met. The list
also omits numerous features found in the claims that Appellant does not
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address viz. an Arctic Cat vehicle. Moreover, there is no evidence that
Arctic Cat actually copied Appellant’s product. “[C]opying requires the
replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). Appellant’s allegation of product
similarity and infringement are not persuasive evidence of copying. See
Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably
falls within the scope of a patent is evidence of copying. Otherwise every
infringement suit would automatically confirm the nonobviousness of the
patent.”).
Although Appellant includes a list of additional claims that recite
features allegedly included in the Polaris Ranger RZR vehicle, there is no
meaningful analysis how any of those features contributed to the alleged
commercial success or industry praise. Weighing the evidence before us, the
Examiner’s strong case of obviousness outweighs Appellant’s weak
evidence of patentability. For the reasons set forth above, we sustain the
Examiner’s rejection of claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and
53. Because the Examiner appears to dismiss portions of the Declaration
evidence, which we discuss in greater detail, we designate the affirmance as
New Grounds of Rejection.
Hypes/Furuhashi/Nash – Claims 23 and 24
Claim 23 depends from claim 22, and claim 24 depends from claim
23. Appellant relies on the patentability of claim 22, and makes no separate
argument in response to the rejection of these claims over Hypes, Furuhashi,
and Nash. Appeal Br. 45; see also id. at 60. Because we are not apprised of
error in the rejection of claim 22, we are also not apprised of error in the
rejection of claims 23 and 24.
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Hypes/Furuhashi/Bataille – Claim 26 and 32
Claims 26 and 32 each ultimately depend from claim 22, and further
recite that “a battery [is] positioned underneath one of the seat bottoms.”
The Examiner finds that Bataille teaches this additional feature and proposes
further modifying the teachings of Hypes accordingly. Non-Final Act. 6.
Appellant argues that the Examiner has provided motivation for including a
battery in the vehicle but not for the placement of that battery. Appeal Br.
45–46. The Examiner counters, however, that Bataille is used for the battery
location and that there are numerous reasons for placing the battery in the
claimed location. Ans. 20–21. The Examiner explains, for example, that
placement of a battery in such a location is beneficial for
numerous reasons, such as adjusting the center of gravity of the
vehicle, placing the battery weight longitudinally in the vehicle
in order to facilitate the weight distribution, ensuring that the
battery is not located in a space directly around the engine where
it would suffer from detrimental thermal rise damage and/or
ensuring that the load carrying spaces of the vehicle are not
reduced in volume by the location of the battery proximate the
load deck.
Id. at 21. Appellant does not address the more specific rationale provided in
the Answer. Accordingly, we sustain the Examiner’s rejection of claims 26
and 32.
Hypes, Furuhashi, and Vittone – Claims 41 and 42
Claim 41 depends from claim 22 and further recites “an engine cover
supported by the upper rear frame portion and extending over one of the
engine and transmission rearward of the seating area, the engine cover
comprising a floor and upstanding sidewalls.” Claim 42 depends from claim
41 and further recites that “the engine is completely under the engine cover.”
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Appellant does not dispute the rejection of claim 41, other than reasserting
the arguments presented with respect to claim 22. Appeal Br. 46. Rather,
Appellant argues that the rejection of claim 42 should be reversed because
no references teach the engine being completely located beneath the engine
cover. Id.
The Examiner does not find that any reference provides such a
teaching, but, instead, asserts that it would have been obvious to completely
cover the engine “to ensure that the engine is protected from the elements,
and that it is desirable to ensure that persons external to the vehicle do not
unexpectedly or unintentionally come into contact with the engine.” Ans.
21. The Examiner goes on to explain that “engine placement completely
under a cover . . . is notoriously old and well known, as can be seen from the
great majority of motorized vehicles in use for the past 50–75 years.” Ans.
22. Appellant does not address, let alone persuasively contest, this finding
or reasoning by the Examiner. Accordingly, we sustain the Examiner’s
rejection.
Hickey/Enokimoto – Claims 43 and 48
Claim 43 is independent, and similar to claim 22, with the addition of
“a modular engine assembly.” Appellant presents a number of contentions
that are similar to those determined unpersuasive as explained above. See
Appeal Br. 47–49. Appellant additionally contends that the Examiner’s
rejection fails to show a modular unit having fixed relationships that are then
capable of being mounted to the frame. Id. at 47. The Examiner responds
that Hickey’s “engine, transmission and at least a portion of the rear axle
assembly . . . can be considered a modular engine assembly” and that this
assembly “may be mounted to – or removed from – the frame as a unit.”
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Ans. 23. Again, Appellant does not address, let alone persuasively contest,
this explanation.
Appellant additionally disputes the Examiner’s rejection as it relates
to claim 43’s recitation that “the transmission compris[es] a continuously
variable transmission.”5 Appeal Br. 50–54. Specifically, Appellant disputes
the Examiner’s rationale for use of a CVT. Appellant contends that “[o]ne
of skill in the art would not combine a CVT with the vehicle of Hickey,
doing so would make the vehicle unsuitable for its intended purpose.” Id. at
54. Appellant contends that “one of skill in the art recognizes that CVT’s
are not desirable for high torque engines such as those used by Hickey,” and,
therefore, “would readily recognize that it is not advisable/possible to
combine a CVT with Hickey.” Id. at 50.
The Examiner explains that
[i]t is well known to be within the skill of the ordinary
practitioner to substitute one transmission for another . . . and it
would have been obvious . . . to provide the transmission taught
by Hickey as a continuously variable transmission for the
purpose of allowing an infinitely variable transmission ratio
beneficially allowing more operational ratios than available with
a fixed-speed transmission, and/or for the purpose of reducing
costs over the use of a geared transmission.
Non-Final Act. 8. The Examiner explains that although “Appellant refers to
an engine having a particular displacement and being capable of delivering a
particular torque,” these specific details are not disclosed in Hickey. Ans.
25. Rather, “Hickey . . . describes the engine as ‘an internal combustion
engine 12’” and the engine’s “operating specification is not disclosed in the

5 This limitation also appears in claim 22 and the discussion above applies
equally to claim 22.
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reference.” Id. (citing Hickey 1:63). That is, the Examiner is relying on
these general teachings from Hickey when explaining that the features of
claim 43 would have been obvious.
Appellant’s contentions regarding the use of a CVT are based on the
use of a high torque engine, which is not the basis for the Examiner’s
rejection, as explained above. Appellant does not provide separate argument
for the patentability of claim 48. For the reasons set forth above, we are not
apprised of error in the rejection of claims 43 and 48.
Hickey/Enokimoto/Hypes – Claims 44–47
Claim 44 depends from claim 43 and recites that “the modular engine
assembly is mounted to the frame by first and second mounting assemblies,
where the first mounting assembly is coupled to the rear axle assembly.”
Claims 45–47 depend from claim 44. The Examiner finds that Hypes
teaches the features recited in claim 44 and proposes further modifying the
teachings of Hickey accordingly. Non-Final Act. 9. Appellant disputes the
Examiner’s finding related to Hypes, but does not allege any particular error
in the rationale provided. Appeal Br. 54–55.
Appellant contends that the Examiner is in error because “bearing 48
and/or axle 50a of Hypes is received from below” while “oppositely,
transaxle casing 72 appears to mount from above.” Appeal Br. 54. As such,
Appellant argues that “[t]he orientation of the cited mounting structures of
Hypes do not permit an engine, transmission, and portion of the rear axle to
be mounted as a unit” as claimed. Id. The Examiner responds that “Hypes
is not relied upon to teach the functional aspect of the engine, transmission
and portion of the rear axle assembly to be mountable as a unit (as this is
deemed covered by the base reference to Hickey, as discussed more fully in
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the rejection of claim 43).” Ans. 28. The Examiner relies on “Hypes . . . to
teach the first, second and third mounting assemblies as specified in claims
44–47.” Id. The Examiner provides a detailed explanation of “the
installation of transaxle 72 from below [being] fully allowed by the structure
disclosed by the Hypes reference” (id. at 27), and explains that “the structure
taught by Hypes [being] capable of being mounted as a unit . . . speaks to the
conceptual compatibility of the reference in the combination” (id. at 28).
Again, Appellant offers no rebuttal to the clarification of the rejection
provided in the Examiner’s Answer, leaving effectively no dispute as to
Hypes teaching the first and second mounting assemblies. And, as noted
above, there is no dispute as to the Examiner’s rationale including those
mounting assemblies in combination with the teachings of Hicks.
Appellant does not argue claims 45–47 separately. As such, we are not
persuaded of error in the Examiner’s rejection of claims 44–47.
Hickey/Enokimoto/Bataille – Claims 49
Claim 49 ultimately depends from claim 43 and further recites that “a
battery [is] positioned underneath one of the seat bottoms.” Claim 43 recites
that the “modular engine assembly [is] supported by the frame rearward of
the seating area.” Appellant argues that the Examiner inconsistently uses
Enokimoto’s seat placement in that the seat placement is required for an
independent claim but the Examiner then essentially disclaims the whole of
the seat placement in order to meet a dependent claim. Appeal Br. 55–56.
Appellant notes that “the Office Action of June 5, 2015, on page 14 states,
‘Enokimoto is relied upon to teach that it is well known to place the seating
elements in a vehicle such that a lower point of the seating surface is lower
than a top of the engine,’” and contends that “[i]f the battery of claim 49
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isn’t being placed beneath the frame, then it is above the frame (yet still
beneath the seat, to meet the claim limitation).” Id. at 56. Appellant
contends that “[t]his would require raising the seat by some amount.” Id.
Initially, we note that Appellant references the Office Action of June
5, 2015, but the subject of this appeal is the Non-Final Action dated
September 13, 2016. With respect to the seat position recited in claim 43,
the Examiner finds that “it is common in the vehicular art to initially provide
a battery on a vehicle for the well known purpose of operating electrical
appliances on the vehicle,” and reasons that “[i]t would have been obvious . .
. to provide the vehicle taught by Hickey as modified by Enokimoto with a
battery under at least one of the seat bottoms as taught by Bataille.” Non-
Final Act. 10.
In the Answer, the Examiner explains that “initially, Enokimoto is
relied upon to teach a characteristic of seat location (e.g., forward of the
engine),” which is recited in claim 43. Ans. 29. The Examiner further
explains that “Bataille is relied upon to teach the provision of a battery under
a seat.” Id. As the Examiner explains, however, nothing in the proposed
combination requires the battery “being of such a height as to render a[] seat
placed above it as somehow resultantly vertically displaced such that a lower
point of the seating surface would no longer be lower than a top of an
engine.” Ans. 29–30. The Examiner further explains that Appellant’s
argument “is at best speculative and is not accompanied by a showing of
facts [that] have been made of record and identified as being such.” Ans. 30.
Appellant does not respond to the Examiner’s further explanation in its
Reply Brief.
We are not apprised of any inconsistency, as alleged by Appellant.
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Hickey/Enokimoto/Vittone – Claims 50 and 51
Appellant relies on the arguments presented with respect to claims 41
and 42 for the patentability of claims 50 and 51. Appeal Br. 56–57. Those
arguments are unpersuasive for the reasons set forth above.
Hickey/Enokimoto/Furuhashi – Claims 22, 27, 28, 30, 31, 33, 34, and 36
In response to the rejection of claims 22, 27, 28, 30, 31, 33, 34, and 36
over Hickey, Enokimoto, and Furuhashi “Applicant first notes that ‘old’
prior art is less probative of obviousness.” Appeal Br. 57–58 (citing Leo
Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013)).
Appellant explains that “Hickey was filed more than thirty years before the
priority of the present application” and “Enokimoto was filed more than
sixteen years before the priority of the present application (and CVT’s
existed before then).” Id. at 57. Appellant contends that “[t]he fact that no
one ever thought to combine them is additional evidence that one of ordinary
skill would not consider teachings of a CVT powertrain design to be obvious
to include in a high-power military vehicle” and “[i]t is also strong evidence
that Polaris’ invention, which did not occur until over 15 years later, was not
obvious.” Id. Appellant’s reliance on Leo Pharm. is misguided.
“The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977); see
also Iron Grip, 392 F.3d at 1325. This was not changed by Leo Pharm. See
Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1337–38 (Fed. Cir. 2016).
Appellant’s general allegations regarding the age of the cited references,
without more, is unpersuasive of error.
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Appellant additionally reasserts arguments presented with respect to
claim 43, as well as the secondary considerations of non-obviousness
discussed above, which are unpersuasive of error for the reasons set forth
above. See Appeal Br. 58–59. Noting the recitation in claim 22 that “each
seat bottom having a seating surface with a low point of the seating surface
being below a top of the engine,” Appellant contends that “Enokimoto is a
rear wheel drive vehicle . . . in contrast to Hickey which runs a front
driveshaft,” and “[i]f the seating of Enokimoto was used in Hickey, the seats
would need to be raised to accommodate the driveshaft.” Appeal Br. 58.
Appellant contends that “if anything, [the Examiner’s proposed]
combination would raise the seat height,” and “the proposed inclusion of the
seating of Enokimoto . . . is at odds with the other limitations of the claim
and/or with the practice of one skilled in the art.” Id. at 58–59.
The Examiner acknowledges that “a practical application of such a
combination would indeed require [increased] vertical height to
accommodate the forward drive shaft,” but explains that “the substantial
height of the engine taught by Hickey, and the substantial height margin
between ‘a low point’ of the seating surface and a top of the engine as
illustrated in Enokimoto allows for such an accommodation.” Ans. 33. The
Examiner further explains that the proposed combination is not based on a
bodily incorporation of teachings. See id. Based on the record before us, we
see no persuasive reason why the proposed combination of teachings would
result in the seat bottom being above the top of the engine as alleged by
Appellant.
Appellant additionally contends that the Examiner fails to address the
limitations recited in claims 33 and 36, which depend from claim 22.
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Appeal Br. 59–60. Claim 33 recites that “the front wheels are spaced-apart
from the rear wheels by a wheelbase distance, the seat bottoms are supported
above the frame by a seat height distance, and the all-terrain vehicle defines
a ratio of the wheelbase distance to the seat height distance of at least 6.0 to
1.” The Examiner responds with respect to claim 33, noting that
the previous Office Action treated this limitation and identified
this limitation as being present in Enokimoto (see Enokimoto,
figure 1; this limitation having been explicitly mentioned by the
examiner in the Office Action of Sept. 13, 2016, the examiner
further providing a rationale as regards this claim of ‘providing
as low as possible of a center of gravity to the vehicle.’
Ans. 35. The Non-Final Action does not reference the limitations recited in
claim 33 under the heading associated with that claim. See Non-Final Act.
11–12. The Non-Final Action does, however, provide such a discussion
under the heading associated with rejection of claims 43 and 48 over Hickey
and Enokimoto. Id. at 8–9. We view the Answer as remedying this error.
Appellant does not address this finding or rationale in its Reply Brief.
Claim 36 depends from claim 34, which depends from claim 22.
Claim 34 recites that the “modular engine assembly is comprised of the
engine, the transmission, and at least a portion of the rear axle assembly,”
and claim 36 adds that “the portion of the rear axle assembly is a
differential.” The Examiner responds to Appellant’s contention regarding
claim 36, noting that
the previous Office Action identified this limitation as being
present in the reference to Hickey (Hickey’s element 36. See
Hickey, col. 2, line 33; also see the Sept. 13, 2016 Office Action
interpretation of the reference to Hickey as presented on page 7
of that action, note that for the elimination of redundant material
in the office action, the description of the Hickey and Enokimoto
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references are not reiterated in the later rejection of claim 36
which is presented on page 11 of the Office Action.
Ans. 35–36. Again, the Non-Final Action does not reference the limitations
recited in claim 36 under the heading associated with that claim. See Non-
Final Act. 11–12. Similar to claim 33, the Non-Final Action does, however,
provide such a discussion under the heading associated with rejection of
claims 43 and 48 over Hickey and Enokimoto. Id. at 7. We view the
Answer as remedying this error. Appellant does not address this finding or
rationale in its Reply Brief.
Appellant does not provide separate argument for claims 27, 28, 30,
31, and 34. For the reasons set forth above, we are not apprised of error in
the rejection of claims 22, 27, 28, 30, 31, 33, 34, and 36.

Hickey/Enokimoto/Furuhashi/Nash – Claims 23 and 24
Claims 23 and 24 depend from claim 22. Appellant does not provide
separate argument for claims 23 and 24.6 Accordingly, we are not apprised
of error in the rejection of claims 23 and 24.

6 It appears that, perhaps, Appellant intended the discussion on page 60 of
the Appeal Brief to apply to this rejection. Nevertheless, that discussion
simply expressly indicates that no separate argument is made for these
claims.
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Hickey/Enokimoto/Furuhashi/ Hill – Claim 25
Claims 25 depends from claim 22. Appellant does not provide
separate argument for claim 25. Appeal Br. 60. Accordingly, we are not
apprised of error in the rejection of claim 25.
Hickey/Enokimoto/Furuhashi/Bataille – Claims 26 and 32
Claims 26 and 32 depend from claim 22. Appellant does not provide
separate argument for claims 23 and 24. Appeal Br. 60. Accordingly, we
are not apprised of error in the rejection of claims 26 and 32.
Hickey/Enokimoto/Furuhashi/Hypes – Claims 35, 37, 38, and 40
Claims 35, 37, 38, and 40 depend from claim 22. Appellant does not
provide separate argument for, or even address, claims 35, 37, 38, and 40.
Accordingly, we are not apprised of error in the rejection of claims 35, 37,
38, and 40.
Hickey/Enokimoto/Furuhashi/ Vittone – Claims 41 and 42
Claims 41 and 42 depend from claim 22. Appellant does not provide
separate argument for, or even address, claims 41 and 42. Accordingly, we
are not apprised of error in the rejection of claims 41 and 42.
DECISION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22, 23, 27,
28, 30, 31,
34–38, 43–
48, 52, 53
103 Hypes, Furuhashi 22, 23, 27,
28, 30, 31,
34–38, 43–
48, 52, 53

23, 24 103 Hypes, Furuhashi,
Nash
23, 24
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26, 32 103 Hypes, Furuhashi,
Bataille
26, 32
41, 42 103 Hypes, Furuhashi,
Vittone
41, 42
43, 48 103 Hickey, Enokimoto 43, 48
44–47 103 Hickey, Enokimoto,
Bataille
44–47
49 103 Hickey, Enokimoto,
Bataille
49
50, 51 103 Hickey, Enokimoto,
Vittone
50, 51
22, 27, 28,
30, 31, 33,
34, and 36
103 Hickey, Enokimoto,
Furuhashi
22, 27, 28,
30, 31, 33,
34, and 36

23, 24 103 Hickey, Enokimoto,
Furuhashi, Nash
23, 24
25 103 Hickey, Enokimoto,
Furhashi, Hill
25
26, 32 103 Hickey, Enokimoto,
Furuhashi, Bataille
26, 32
35, 37, 38,
40
103 Hickey, Enokimoto,
Furuhashi, Hypes
35, 37, 38,
40

41, 42 103 Hickey, Enokimoto,
Furuhashi, Vittone
41, 42
Overall
Outcome:
22–28, 20–
38, 40–53

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection7, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome. If Appellant elects
prosecution before the Examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should be returned to
the Patent Trial and Appeal Board for final action on the affirmed rejection,
including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)

7 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for
rehearing within two months from the date of the original decision of the
Board.”