Ex Parte Courtemanche et al

Patent Trial and Appeal Board

Aug 25, 2017

12974964 (P.T.A.B. Aug. 25, 2017)

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.
12/974,964 12/21/2010 Denis COURTEMANCHE 11610.0024FPC1 4613
26161 7590 08/29/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENIS COURTEMANCHE and JULES DANDURAND
Appeal 2016-007352
Application 12/974,964
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN P. PINKERTON,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007352
Application 12/974,964
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8—53, 55, and 57. Claims 1—7, 54, 56, and 58 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Appellants disclose and claim an endless snowmobile track (Fig. 1,
element 10) having traction profile lugs (Fig. 1, element 20) for receiving
traction studs (Fig. 2, element 22). Spec. Tflf 1,2, 8, 9. Each traction profile
lug 20 has a stud mount 30 (Fig. 3) that includes a flange 34, stud receiving
passage 32, and a bottom flange 36 with a cavity for receiving a protrusion
portion of a stud 22 (see Fig. 2, mushroom-shaped portion on left side of
stud 22). Independent claims 8 and 30 both recite an endless snowmobile
track including a plurality of traction profile lugs with stud mounts and
traction studs. Remaining independent claim 52 recites a method for
mounting traction studs to a snowmobile track having the components
recited in apparatus claims 8 and 30. Exemplary independent claim 8 under
appeal, with emphases added, reads as follows:
8. An endless snowmobile track comprising a plurality of
traction profile lugs, a plurality of ones of the traction profile
lugs having stud mounts for receiving traction studs, each
traction stud including a barrel part, a tip part and a laterally
extending protrusion, each stud mount including:
i. a stud-receiving passage of a cross-section smaller
than a cross-section of the barrel part of the traction stud; and
ii. at least one flange-like cavity projecting laterally
from said stud-receiving passage, the flange-like cavity
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dimensioned to accommodate the protrusion of the traction
stud;
wherein the traction stud is anchored into the traction
profde lug by forced insertion to create a press-fit engagement
in which the tip part projects out of the traction profile lug, the
barrel part is received in the stud-receiving passage, and the
protrusion is received in the flange-like cavity.
Examiner’s Rejections
(1) The Examiner rejected claims 8, 9, 11, 14—16, 30, 31, 33, 36—38,
52, 53, 55, and 57 as being unpatentable under 35 U.S.C. § 103(a) over
Kimpex Snowmobile Parts and Accessories Catalog, pp. 1—3 (1993)
(“Kimpex”), Keinanen (US 3,186,466, issued June 1, 1965 (“Keinanen
’466)), and Miller II (US 3,400,443, issued Sept. 10, 1968 (“Miller”).1 Final
Act. 3—6; Ans. 2^4.
(2) The Examiner rejected claims 10, 12, 17—19, 32, 34, and 39-41
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Kimpex, Keinanen ’466, Miller, and Musselman et al. (US 6,609,772 B2,
published Aug. 26, 2003 (“Musselman”)). Final Act. 6—7; Ans. 4—5.
(3) The Examiner rejected claims 13 and 35 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kimpex, Keinanen ’466,
Miller, and Keinanen (US 3,842,880; issued Oct. 22, 1974) (“Keinanen
’880”). Final Act. 7; Ans. 5—6.
1 Appellants present general arguments as to claims 8, 9, 11, 14—16, 30, 31,
33, 36—38, 52, 53, 55, and 57 as a group without discussing any particular
claim, and primarily argue that Keinanen ’466 is non-analogous art (App.
Br. 4—13; Reply Br. 4—5). We select independent claim 8 as representative
of the group of claims consisting of claims 8, 9, 11, 14—16, 30, 31, 33, 36—
38, 52, 53, 55, and 57.
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(4) The Examiner rejected claims 20-20 and 42—51 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kimpex, Keinanen
’466, Miller, Musselman, and Courtemanche (US 6,109,705, issued Aug. 29,
2000). Final Act. 7—8; Ans. 6—7.
Principal Issues on Appeal2
Based on Appellants’ arguments (App. Br. 3—16; Reply Br. 1—5), the
following principal issue is presented:
Did the Examiner err in rejecting claims 8, 9, 11, 14—16, 30, 31, 33,
36—38, 52, 53, 55, and 57 as being unpatentable under 35 U.S.C. § 103(a)
over Kimpex, Keinanen ’466, and Miller as being obvious because the
references are not properly combinable and/or Keinanen ’446 is non-
analogous to Appellants’ invention recited in representative claim 8?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 3—8; Ans. 2—
7) in light of Appellants’ contentions in the Appeal Brief (App. Br. 3—16;
2 Although it appears Appellants fail to present any separate arguments with
regard to the rejections of (i) claims 10, 12, 17—19, 32, 34, and 39-41 under
§ 103(a) over Kimpex, Keinanen ’466, Miller, and Musselman; and/or (ii)
13 and 35 under § 103(a) over Kimpex, Keinanen ’466, Miller, and
Keinanen ’880 (see App. Br. 15), even giving Appellants the benefit of the
doubt, Appellants at best argue on page 15 of the Appeal Brief that the
tertiary and other additional references do no cure the deficiencies of the
base combination (allegedly applying Keinanen ’466, a non-analogous
reference). Therefore, the outcome for the rejections of claims 10, 12, 13,
17—29, 32, 34, 35, and 39—51 will stand or fall with the outcome of
representative claim 8 pertaining to the base combination of Kimpex,
Keinanen ’466, and Miller.
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Reply Br. 1—5) that the Examiner has erred, as well as the Examiner’s
response to Appellants’ arguments in the Appeal Brief (Ans. 7—17).
We disagree with Appellants’ arguments and conclusions. With regard to
representative claim 8, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 4—6; Ans. 2-4), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 7—17).
We concur with the conclusions reached by the Examiner as to
representative claim 8, and highlight and address specific findings and
arguments for emphasis as follows.
We agree with the Examiner’s well-articulated rationale for
combining the teachings of Kimpex, Keinanen ’466, and Miller (see Final
Act. 4—6; Ans. 2-4). Specifically, we agree with the Examiner that (i) “it is
well known in the art that an object press fit into a hole requires a larger
cross section than the cross section of the hole so that the sides of the hole
and the sides of the object provide interference therebetween” (Final Act. 4;
Ans. 3); (ii) “it would have been obvious to one of ordinary skill in the art at
the time of the invention to form the stud mount with a laterally extending
flange portion as taught by [Keinanen], for the purpose of positively
retaining the flanged traction stud within the belt, thus preventing loss of the
traction studs during use” (Final Act. 5; Ans. 3—4); and (iii) “it would have
been obvious to one of ordinary skill in the art at the time of the invention to
provide the traction stud and the flange-like cavity of [Keinanen 466] as
modified by [Miller] with a generally flat bottom, as an equivalent
and alternative design” (Final Act. 5—6; Ans. 4).
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Furthermore, we agree with the Examiner’s response to Appellants’
arguments concerning hindsight and the motivation to combine as stated at
pages 9—10 and 14—17 of the Answer, and specifically that “[o]ne of
ordinary skill in the art would have found it obvious to form the stud
mounting bore/hole of the tread surface of the Kimpex track to have a shape
that is complementary to the shape of the well-known traction stud disclosed
by Kimpex” and
the well-known traction stud of Kimpex has a generally bulbous
shape . . . [t]hus one of ordinary skill in the art would see from
the teaching of [Keinanen] (which also teaches the use of a
traction stud having a generally bulbous shape) that the shape
of the stud mounting bore/hole of the Kimpex track
could obviously have a generally bulbous shape to aid in
retention of the traction lug in the tread surface of the track.
(Ans. 17).
Appellants do not dispute the Examiner’s determination (see Final
Act. 4—6; Ans. 2—4) that the combined teachings and suggestions of Kimpex
(related to endless snowmobile tracks), Keinanen ’466 (related to studs and
stud mounts for automotive tires), and Miller (related to studs for automotive
tires having a flat bottom) render obvious the subject matter recited in
representative claim 8. Instead, Appellants’ arguments and declarations of
record are primarily drawn to whether one of ordinary skill in the
snowmobile art would have looked to Keinanen ’466 (in the automotive art)
to improve studs and stud mounts for traction in cold weather environments
(i.e., whether Keinanen ’466 is analogous art). For the reasons that follow,
we find Keinanen ’466 (as well as Miller, which is also drawn to automotive
applications for studs and stud mounts) to be analogous to the subject matter
recited in claim 8.
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A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MCA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In reBigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: (1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved,” even though the
reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d
at 1325.
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Id. at 1325—27. It is necessary to
apply “common sense’’ in “deciding in which fields a person of ordinary skill
would reasonably be expected to look for a solution to the problem facing
the inventor.” Id. at 1326 (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992)).
As to the “reasonably pertinent” test: A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve. If a reference
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disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in
an obviousness rejection. An inventor may well have been motivated to
consider the reference when making his invention. If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it. Clay, 966 F.2d at 659.
In the instant case, we agree with the Examiner (Ans. 7—17) that
Kimpex, Keinanen ’466, and Miller are all analogous art to Appellants’
claimed invention. Specifically, we agree with the Examiner that
Appellants’ invention (recited in claim 8 — an endless snowmobile track
having traction profile lugs for receiving traction studs, each traction profile
lug having a stud mount including a flange, stud receiving passage, and
bottom flange with a cavity for receiving a protrusion portion of a stud) and
Keinanen ’466 increase traction of a tread surface by the use of traction
studs. We also agree with the Examiner that Keinanen ’466 and Miller both
relate to the same problem as the claimed invention of increasing traction of
a tread surface by the use of traction studs (see Ans. 7, 8, 11, 12). This is
further amplified by the fact that the same standardized studs can be found in
both the snowmobile and automotive stud/stud mount technologies (see Ans.
14—15 (showing and discussing the use of #12 traction studs)).
Additionally, we find Keinanen ’466, Miller, and Appellants’
invention recited in claim 8 to all be directed to the same field of endeavor
of improving traction and stud retention of studs in stud mounts for studs in
a substrate (whether it be for automotive or snowmobile use, or for endless
tracks or tires) for cold weather applications. And, Keinanen ’466 and
Miller are reasonably pertinent to the particular problem with which the
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inventor is involved, which is, as the Examiner states, “increasing traction to
tread units” (Ans. 7) in order to “propel a vehicle across a surface” {id. at 7—
8) and “increasing traction of a tread surface by the use of traction studs” {id.
at 11). Further, Miller and Keinanen ’466 are both directed to traction stud
retention with a tread surface using specific stud mount cavity shapes, and
are thus directly related to Appellants’ claimed invention, which is more
specifically an endless track snowmobile application (and notably, Kimpex
is directed to endless snowmobile tracks with studs). Therefore, it would be
common sense to look to automotive tire studs and stud mounts when faced
with a stud retention problem for endless snowmobile tracks. Bigio, 381
F.3d at 1326.
Despite Appellants’ Declarations to the contrary, Keinanen ’466 and
Miller are analogous art with the subject matter of claim 8, and one of
ordinary skill in the art would indeed consider automotive snow tires, studs,
and stud mounts when faced with the problem of how to increase traction
and stud retention in stud mounts of an endless snowmobile track. Again,
this is amplified by the facts that (i) all of the references and Appellants’
subject matter recited in claim 8 concern increasing traction of a tread
surface by the use of traction studs {see Ans. 7, 8, 11, 12); and (ii) the exact
same standardized studs can be found in both the snowmobile and
automotive stud/stud mount technologies {see id. at 14—15 showing and
discussing the use of #12 traction studs).
In view of the foregoing, we agree with the Examiner {id. at 7) that
Kimpex, Keinanen ’466, and Miller are analogous to the subject matter
recited in representative claim 8, and thus, are properly combinable.
Accordingly, we sustain the Examiner’s obviousness rejection of
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representative claim 8 over the combination of Kimpex, Keinanen ’466, and
Miller along with claims 9, 11, 14—16, 30, 31, 33, 36—38, 52, 53, 55, and 57
grouped therewith. For similar reasons, we also sustain the Examiner’s
rejections of claims 10, 12, 13, 17—29, 32, 34, 35, and 39—51 based on the
same base combination of Kimpex, Keinanen ’466, and Miller.
Declarations
The weight and credibility accorded each item of evidence, including
declarations, is an issue of fact within the discretion of the Board. Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003). Conclusory declarations
lacking specificity, such as the instant Declarations,3 are legally insufficient
to rebut the Examiner’s prima facie enablement rejection. See, e.g.,
Automotive Tech. Int’l. v. BMWofN. Am., Inc., 501 F.3d 1274, 1284—85
(Fed. Cir. 2007) (Declaration “failed to provide any detail regarding why
[undue] experimentation was [not] necessary.”). See, e.g., Am. Acad. ofSci.
Tech. Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”); In re Etter, 756
F.2d 852, 859—60 (Fed. Cir. 1985) (opinion affidavit asserting the reference
disclosed obsolete technology was correctly characterized by the board “as
merely representing opinion[] unsupported by facts and thus entitled to little
or no weight” (citing In re Piasecki, 745 F.2d 1468, 1472—73 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)).
We have duly considered Appellants’ Declarations in assessing the
3 See Declaration of Denis Courtemanche dated July 7, 2014; Declaration of
Denis Boivin dated July 4, 2014; and Declaration of Jules Dandurand dated
May 7, 2012 (starting at App. Br. 29, Exhibits 1—3).
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obviousness of Appellants’ claimed invention. See Ruiz v. A.B. Chance Co.,
234 F.3d 654, 667 (Fed. Cir. 2000) (evidence of secondary considerations
must be considered in determining obviousness if present); accord Stratoflex
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). The
declarants’ statements and contentions made in the declarations that it is
non-obvious in view of Keinanen ’466 to use an automotive tire stud and/or
stud mount in an endless snowmobile track are not persuasive for several
reasons. In particular, the declarations do not overcome the obviousness
rejection over Kimpex, Keinanen ’466, and Miller inasmuch as the
declarations (i) do not refer to specific claims, (ii) do not have a nexus with
the subject matter of representative claim 8 (further explained below), (iii)
merely assert non-obviousness over Kimpex, Keinanen ’466, and Miller
(further explained below) but do not provide objective evidence as to
Keinanen ’466’s inoperability or non-combinability,4 and (iv) allege
advantages of Appellants’ disclosure over automotive tire studs and stud
mounts without providing or citing any objective evidence pertinent to what
is actually recited in representative claim 8.
Specifically, although we find Appellants’ Declarations concerning
4 Despite Appellants’ Declaration to the contrary, Keinanan ’466 and Miller
are analogous art with the subject matter of claim 8 and one of ordinary skill
in the art would indeed consider automotive snow tires, studs, and stud
mounts when faced with the problem of how to increase traction and stud
retention in stud mounts of an endless snowmobile track. This is amplified
by the facts that (i) all of the references and Appellants’ subject matter
recited in claim 8 concern increasing traction of a tread surface by the use of
traction studs (see Ans. 7, 8, 11, 12); and (ii) the exact same standardized
studs can be found in both the snowmobile and automotive stud/stud mount
technologies (see id. at 14—15 showing and discussing the use of #12 traction
studs).
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the alleged benefits of the disclosed stud mount for endless snowmobile
tracks (namely the amount of centrifugal force exerted on the studs, amount
of traction stud retention/retraction, the size of the stud, type/hardness of the
rubber, pressure exerted on the ground, and/or substrate to be ridden on) as
compared to automotive applications to be persuasive, none of these alleged
benefits are found in representative claim 8. Instead, claim 8 is merely
directed to an endless snowmobile track having traction profile lugs for
receiving traction studs, each traction profile lug having a stud mount
including a flange, stud receiving passage, and bottom flange with a cavity
for receiving a protrusion portion of a stud. Simply put, Appellants have not
limited claim 8 in any way that would differentiate the subject matter so as
to claim the declared benefits related to the amount of centrifugal force
exerted on the studs, amount of traction stud retention/retraction, the size of
the stud, type/hardness of the rubber, pressure exerted on the ground, and/or
substrate to be ridden on.5 In any event, on the record currently before us,
the declarations are not persuasive of the non-obviousness of the inventions
of claims 8—53, 55, and 57 because the declarations do not have a nexus with
the claims, namely the features of claim 8 pertaining, for example, to how to
better anchor traction studs in stud mounts by press fitting (and notably,
claim 8 does not even recite a rubber substrate, track, or stud mount).
5 Should there be further prosecution of the instant application on appeal,
Appellants may wish to consider limiting the claims by adding some or all of
these features.
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Summary
In view of the foregoing, Appellants have not sufficiently shown that
the base combination of Kimpex, Keinanen ’466, and Miller fails to teach or
suggest a stud mount for receiving traction studs for use on an endless track
of a snowmobile, as recited in representative claim 8. Furthermore, the
declarations are not sufficient to overcome the Examiner’s obviousness
rejection over the base combination.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 8—53, 55, and 57 as
being obvious over the base combination of Kimpex, Keinanen ’466, and
Miller.
(2) The Examiner has provided sufficient motivation to combine
Kimpex, Keinanen ’466, and Miller.
(3) Keinanen ’446 is analogous art as it pertains to the subject matter
recited in representative claim 8; therefore, the Examiner did not err in
rejecting claims 8—53, 55, and 57 as being obvious over the base
combination of Kimpex, Keinanen ’466, and Miller because the references
are properly combinable and are analogous to Appellants’ recited invention.
DECISION
The Examiner’s rejections of claims 8—53, 55, and 57 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED
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