Ex Parte 6575310 et al

Patent Trial and Appeal BoardDec 3, 2012

95001438 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,438 09/02/2010 6575310 EES03-00411 7697 24628 7590 12/04/2012 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER ENGLISH, PETER C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/04/2012 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 ____________________ TITAN MARKETING, LLC Requester, Respondent v. TC DEVELOPMENT AND DESIGN, INC. Patent Owner, Appellant ____________________ Appeal 2012-004523 Reexamination Control 95/001,438 Patent US 6,575,310 C11 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG and JOSIAH C. COCKS, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Requester requests reconsideration under 37 C.F.R. Â§ 41.79 (hereinafter "Req." or "Request") of our Decision mailed July 18, 2012 (hereinafter "Dec." or "original Decision"). The original Decision reverses the Examiner's Final rejections of claims 1-8. We grant the Request to the 1 Issued June 10, 2003 to Chamoun (hereinafter "â€˜310 patent"). Appeal 2012-004523 Reexamination Control 95/001,438 Patent US 6,575,310 C1 2 extent that we consider the Requester's arguments infra, but decline to modify the original Decision. The Examiner's findings and rationale for the obviousness rejection based on the combination of Mayfield2 or Jones3 with Hymer4 is set forth in the record (RAN 5-6; Dec. 5). In the original Decision, we disagreed with the Examiner's finding and the Requester's assertion that the wheel stop of Hymer is a pivoting saddle or that it is pivotable (Dec. 6-7). We further found the Examiner's reason for modifying Mayfield or Jones in view of Hymer to "accommodate different size motorcycles" did not make sense considering that the devices disclosed in Mayfield or Jones secure only the front wheel of a motorcycle (Dec. 7-8). Thus, we found this stated reason based on accommodation of different sized motorcycles not rational and inadequate to support the conclusion of obviousness. We also stated that as to accommodation of different sized motorcycle wheels, both Mayfield and Jones already include features that allow such accommodation (Dec. 8). The Requester argues that the Board erred in concluding "that there is a lack of motivation to modify the devices of Mayfield and Jones to achieve adjustability along the longitudinal direction." (Req. 5; see also Req. 3). However, the Requester misconstrues the original Decision in that we reversed the Examiner's rejection because we found the proffered reasons to be "inadequately supported by rational underpinnings and seemingly based on impermissible hindsight and thus, are insufficient to support the conclusion of obviousness." (Dec. 9). 2 U.S. Patent No. 5,988,402. 3 U.S. Patent No. 3,430,983. 4 U.S. Patent No. 5,462,398. Appeal 2012-004523 Reexamination Control 95/001,438 Patent US 6,575,310 C1 3 In addition, the secondary basis offered in support of the suggested combination was that it "enables the motorcycle stand to accommodate â€¦ different size motorcycle wheels." (RAN 6). This reason is merely conclusory and does not address why one of ordinary skill in the art would pursue such a modification of Mayfield or Jones in view of the teachings therein that the disclosed devices already include features for accommodation of different sized wheels (Dec. 8-9). In the Request for Rehearing, the Requester focuses on the teachings of Mayfield and Jones as to the need of accommodating different sized wheels as establishing motivation to modify the devices of Mayfield and Jones (Req. 5). However, the Requester again ignores the fact both Mayfield and Jones already purport to solve this very need of accommodating different sized wheels as explained in the original Decision (Dec. 8-9 and citations to disclosures Mayfield and Jones therein). In the Request, the Requester further argues that both Mayfield and Jones illustrate their limitation in the ability to accommodate larger diameter tires and that there is a maximum diameter that can be accommodated due to the fixed distance between the pivot pin and the shoe that also secures the tire (Req. 6). In particular, the Requester states that "any tire diameter greater than the fixed distance â€¦ cannot be accommodated," so that it would be obvious to make the pivoting saddle movable (Id. at 6-7). However, as we stated, "[t]he record is insufficient to establish that devices of the type disclosed in Mayfield and Jones that provide accommodation of wheels of different sizes are inadequate for this very purpose." (Dec. 9). The claims of the '310 patent are directed to a device for a motorcycle, as are the devices Appeal 2012-004523 Reexamination Control 95/001,438 Patent US 6,575,310 C1 4 of Mayfield and Jones. Nothing in the record, such as objective evidence, persuasively establishes that the devices of Mayfield and Jones are ill suited to secure motorcycle wheels of various sizes which would include those of larger diameters, so as to support the Requester's argument or the Examiner's stated reason. We also observe that even the device resulting from the modification suggested by the Requester will seemingly be limited to a maximum diameter of a wheel which can be accommodated. As to the Requester's assertion of obviousness in further combination with the asserted admissions in the â€˜310 Patent, the original Decision adequately explains that "the cited statements of the '310 patent do not admit that it would have been obvious to include a pivoting saddle that is adjustably mounted to the frame." (Dec. 10). Whereas the Requester argues that the claimed invention having the recited connection is obvious for other reasons (Req. 8-9), we observe that these were not the bases on which the claims of the '310 patent were rejected and appealed. Moreover, the Requester appears not to appreciate that such assertions of obviousness must be supported by reasoning with rational underpinnings to avoid reliance on ex post reasoning, and that such reasoning is more persuasive when bolstered by supporting evidence. See KSR Intâ€™l v. Teleflex, Inc., 550 U.S. 398, 418 and 421 (2007)("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness")(citations omitted); "[F]actfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning." Appeal 2012-004523 Reexamination Control 95/001,438 Patent US 6,575,310 C1 5 Finally, the Requester's "alarm" with respect to the amount of disclosure regarding the adjustable connection within the â€˜310 patent (Req. 10) was also not an issue on appeal and does not even appear to be within the proper scope of the reexamination proceeding. CONCLUSION We discern no error in the original Decision, and thus, the Request for Reconsideration is DENIED. DENIED rvb PATENT OWNER: HUSCH BLACKWELL LLP 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 THIRD PARTY REQUESTER: TAFT STETTINIUS & HOLLISTER LLP ONE INDIANA SQUARE SUITE 3500 INDIANAPOLIS, IN 46204-2023