Black Diamond Xtreme Engineering, Inc.

Patent Trials and Appeals Board

Mar 30, 2022

2022000762 (P.T.A.B. Mar. 30, 2022)

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. 16/430,936 06/04/2019 Ray Schoenfelder B115.0006US1 9068 27367 7590 03/30/2022 WESTMAN CHAMPLIN & KOEHLER, P.A. 121 South Eighth Street Suite 1100 Minneapolis, MN 55402 EXAMINER WILLIAMS, MAURICE L ART UNIT PAPER NUMBER 3611 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): docketing@wck.com tsorbel@wck.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAY SCHOENFELDER Appeal 2022-000762 Application 16/430,936 Technology Center 3600 Before EDWARD A. BROWN, ANNETTE R. REIMERS, and CARL M. DEFRANCO, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to “a drive assembly and electric motor configured for propelling a snowmobile or other tracked vehicle.” Spec. ¶ 2. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Black Diamond Xtreme Engineering, Inc. as the real party in interest. Appeal Br. 3. Appeal 2022-000762 Application 16/430,936 2 Claims 1, 4, and 10 are independent. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A skid frame assembly for a snowmobile, the skid frame assembly affixed to a chassis and having a front portion aligned with a front of the tracked vehicle and a rear portion aligned with a rear of the snowmobile, the skid frame assembly comprising: a track, the track encircling the skid frame assembly and having a plurality of grooves; an electric motor; a power source, the power source coupled to the electric motor; a housing, the housing cylindrical and encircling the electric motor, wherein the housing is rotated about the electric motor upon activation of the power source; and a drive sprocket, the drive sprocket coupled to the housing and having a plurality of teeth, the teeth sized for engagement with the grooves of the track portion in an intermeshed coupling, wherein the drive sprocket is rotated along with the housing to propel the track portion. Appeal Br. 19 (Claims App.). REJECTIONS 1. Claims 1-8, 10-14, and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Burger (US 2017/0113119 A1, published Apr. 27, 2017) and Christini (US 2017/0253297 A1, published Sept. 7, 2017). 2. Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Burger, Christini, and Wishart (US 2012/0206004 A1, published Aug. 16, 2012). Appeal 2022-000762 Application 16/430,936 3 ANALYSIS The Examiner finds that Burger discloses most of the claim limitations, but acknowledges that it does not teach a snowmobile. See Final Act. 2-4. The Examiner finds, however, that Christini teaches a snowmobile that uses a powered ski and track assembly. Id. at 4. The Examiner considers that modifying Burger’s motorized skis with “means for the operator to sit while traversing a snowy terrain,” as taught by Christini, would have been obvious to one of ordinary skill in the art. Id. Appellant responds that one skilled in the art would not modify a motorized pair of skis where the skier is “standing (one foot on each ski)” into a device in which the skier is “sitting” as taught by Christini. Appeal Br. 12. According to Appellant, Burger is “not silent” in focusing on the standing mode of its sporting device- [Burger’s] disclosure is directed to alpine ski or touring ski devices, having a drive in the form of a combustion motor for assisting muscular force and moreover in Burger it is stated that the “objective of this invention is to propose an improved sporting device which is as lightweight as possible and offers improved handling properties, especially in travelling mode.” Further, from this, there is no reason to extrapolate from an exercise device to a passive device - one where the user is sitting. Id. at 13 (quoting Burger ¶ 4). We see merit in Appellant’s contentions. The Examiner’s proposed modification would render Burger’s ski device unsatisfactory for its intended purpose because installing a seat-type structure such as Christini’s on Burger’s motorized skis would deprive the skier of using Burger’s device for aerobic exercise. Indeed, Burger makes amply clear that the motorized skis are intended for “standing on” to enable “physiological motion and walking Appeal 2022-000762 Application 16/430,936 4 sequences.” Burger ¶ 64; see also id. ¶¶ 31, 33, 58, 63, 71, 119, 130 (repeatedly describing the motorized skis in terms of assisting the user with “physiological walking” or “walking movement”). That both Burger and Christini employ motorized skis does not necessarily make their teachings compatible in the eyes of the ordinary artisan, especially where, as here, their objectives are entirely different. And not only would the Examiner’s proposed modification destroy the very essence of Burger’s motorized skis as an aerobic exercise device, it would negate the explicit advantage of its design as a “simple” and “lightweight” structure that “can be removed relatively easily . . . so that the sporting device can be rapidly switched from climbing mode to travel mode” and is “easier to carry.” Burger ¶ 7. More likely than not, one skilled in the art would view Christini’s seat structure as being neither easily removable nor easily carried by a user of Burger’s motorized skis. In sum, it is not clear that the Examiner articulates sufficient reasoning with rational underpinning for combining the teachings of Burger and Christini. Accordingly, we do not sustain the Examiner’s rejection of claims 1-8, 10-14, and 16 as unpatentable over Burger and Christini. And because the Examiner’s rejection of dependent claims 9 and 15 relies on this same faulty reasoning for combining Burger and Christini, we also do not sustain the rejection of either of those dependent claims. Appeal 2022-000762 Application 16/430,936 5 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1-8, 10-14, 16 103 Burger, Christini 1-8, 10-14, 16 9, 15 103 Burger, Christini, Wishart 9, 15 Overall Outcome 1-16 REVERSED