Ex Parte Dandurand et al

Patent Trial and Appeal Board

Mar 5, 2019

13689128 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/689, 128 11/29/2012
26161 7590 03/07/2019
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Jules Dandurand
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
24855-0035001 I 86443-60 4106
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
03/07/2019 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULES DANDURAND, DENIS COURTEMANCHE,
PASCAL LABBE, and LINDA POULIN
Appeal2018-005013
Application 13/689, 128
Technology Center 3600
Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-3, 7-15, 17-19, and 23-34. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Camso Inc. is the Applicant and real party in interest. Appeal Br. 3.
Appeal2018-005013
Application 13/689, 128
THE INVENTION
Appellants' invention relates to track systems for off-road vehicles
such as snowmobiles. Spec. 1. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A track for traction of a vehicle, the track being
mountable around a track-engaging assembly, the track-
engaging assembly comprising a drive wheel for driving the
track, the track being elastomeric to be flexible around the
track-engaging assembly, the track comprising:
an inner surface for facing the track-engaging assembly;
a ground-engaging outer surface for engaging the ground;
a plurality of drive/guide projections projecting from the
inner surface;
a plurality of traction projections projecting from the
ground-engaging outer surface; and
a plurality of stiffening rods extending transversally to a
longitudinal direction of the track, each stiffening rod of the
plurality of stiffening rods having a cross-section perpendicular
to a longitudinal axis of the stiffening rod, the cross-section of
the stiffening rod having an aspect ratio greater than two, a
dimension of the cross-section of the stiffening rod in a
thickness direction of the track varying in the longitudinal
direction of the track.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Russ
Chaumont
Courtemanche '510
Courtemanche '705
Arakawa
Fukushima
us 3,747,995
us 3,883,191
us 5,730,510
us 6,109,705
US 6,203,125 B 1
US 7,407,236 B2
2
July 24, 1973
May 13, 1975
Mar. 24, 1998
Aug.29,2000
Mar. 20, 2001
Aug. 5,2008
Appeal2018-005013
Application 13/689, 128
The following rejections are before us for review:
1. Claims 1-3, 7-10, 17-19, 23-29, and 31-34 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Chaumont and
Courtemanche '510.
2. Claims 11, 12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chaumont, Courtemanche '510, and Russ.
3. Claims 13, 14, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chaumont, Courtemanche '510, and Fukushima.
4. Claims 11, 12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Courtemanche '705 and Russ.
5. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Courtemanche '705 and Fukushima.
6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Courtemanche '705 and Arakawa.
7. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Courtemanche '705, Russ, and Arakawa. 2
OPINION
Unpatentability of Claims 1-3, 7-10, 17-19, 23-29, and 31-34
over Chaumont and Courtemanche '510
Claims 1-3, 7-10, 17-19, and 31-34
Appellants argue claims 1-3, 7-10, 17-19, and 31-34 as a group.
Appeal Br. 7-13. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
2 A rejection of claims 1-3, 7-15, 17-19, and 23-34 under 35 U.S.C.
§ 103(a) over Courtemanche '705 has been withdrawn by the Examiner.
Ans. 6.
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Application 13/689, 128
The Examiner finds that Chaumont discloses the invention
substantially as claimed except for explicitly teaching that the cross-
sectional thickness of the stiffening rod varies in the longitudinal direction of
the track, for which the Examiner relies on Courtemanche '510. Final
Action 2-3. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to form the
stiffening rods of Chaumont with a shape as taught by Courtemanche '510.
Id. at 3. According to the Examiner, a person of ordinary skill in the art
would have done this as it amounts to a mere substitute equivalent
configuration that serves the purpose of relieving stress concentrations in the
track body around the periphery of the stiffening rod. Id. at 3--4.
Appellants concede that Chaumont discloses: (1) an aspect ratio
greater than two, and (2) cross-sectional shapes that are not rectangular.
Appeal Br. 7-8. Nevertheless, Appellants argue that the applied art fails to
render obvious the use of stiffening rods with a cross-sectional thickness that
varies in the longitudinal direction of the track. Id. at 8. Appellants, in
addition, argue that Chaumont fails to describe "any particular benefit" or
recognize any importance associated with the aspect ratio of its reinforcing
member. Id. Appellants, moreover, argue that nothing in Chaumont
suggests that the aspect ratio of the reinforcing bar cross-section would
remain at or above two if a shape other than rectangular is used. Id. Finally,
Appellants argue that the Examiner's rationale for modifying the shape of
Chaumont, namely, to relieve stress, is "entirely speculative." Id. at 10.
In response, the Examiner reiterates that Chaumont discloses aspect
ratios greater than two and also discloses non-rectangular shapes. Ans. 6-7
("any number of 'non-circular' cross-sectional shapes mentioned by
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Application 13/689, 128
Chaumont may meet this limitation"). The Examiner then reiterates that
Courtemanche '510 discloses a non-circular shape with a cross-section that
varies in the longitudinal direction of the track. Id. at 6 ("which happens to
be exactly the same shape as the instant invention"). The Examiner then
observes that the ratio between the height and width (aka "aspect ratio") is a
geometric variable that is result effective. Id. at 7.
[T]he aspect ratio of an object's cross-section is a known result
effective variable. Namely, the ratio between the height and
width (aka aspect ratio) of an object is purely a geometric
variable, which is dependent upon the desired amount of
stiffness of the object.
Id. at 8. Finally, in response to Appellants' argument that the rationale of
relieving stress is speculative, the Examiner states that it is well known that
objects with curved outer peripheries do not cause areas of concentrated
stress and are thus, more desirable when used to reinforce a flexible object
such as an endless track that rotates about wheels. Id. at 9.
In reply, Appellants argue that Chaumont and Courtemanche '510 are
silent as to whether their respective drawings are drawn to scale. Reply
Br. 3 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951,
956 (Fed. Cir. 2000)). Appellants characterize as "non sequitur" the
Examiner's finding that the aspect ratio is result effective. Id. at 4.
We find Appellants' arguments unpersuasive. In particular, we find
Appellants' repeated efforts to belittle the Examiner's scientific and
technical expertise inappropriate under the facts of the circumstances of this
case. As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art and the motivation those references would provide to such
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persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal
error or contrary factual evidence, those findings can establish a prima facie
case of obviousness. Id. Here, we determine that the Examiner's findings
regarding: (1) relieving stress by using rounded comers on a stiffening bar;
and (2) varying the height to width ratio is result effective with respect to
stiffness reflect scientific and technical reasoning that is well within the
Examiner's competence and authority under Berg. Further to this regard, we
note the complete absence of contrary factual evidence in Appellants' briefs.
Appellants' assertions amount to no more than unsubstantiated attorney
argument, which does not pass for evidence. See Invitrogen Corp. v.
Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (explaining that
unsubstantiated attorney argument is no substitute for competent evidence).
Appellants' argument that the Examiner's finding that aspect ratio is a
result effective variable constitutes a "non sequitur" misses the mark. It is
well settled that "generally, a claim to a product does not become
nonobvious simply because the patent specification provides a more
comprehensive explication of the known relationships between the variables
and the affected properties." In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012). Thus, "[w]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation." Id. (quoting In re Aller, 220
F.2d 454,456 (CCPA 1955)). Here, Courtemanche '510 discloses a
stiffening rod that is almost identical in shape to the embodiment depicted in
Figure 6 of Appellants' disclosure. Compare Fig. 6, element 36, with
Courtemanche '510 Fig. 3, element 32. A person of ordinary skill in the art
would understand that the stiffening properties of the rod can be adjusted by
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Application 13/689, 128
increasing the height relative to the width and vice versa. Arriving at a
desired amount of stiffness amounts to no more than routine optimization
that it is well within the ambit of ordinary skill.
Nevertheless, the outcome of optimizing a result-effective variable
may still be patentable if the claimed ranges are "critical" and "produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art." Applied Materials, 692 F.3d
at 1297. However, the Examiner correctly notes that Appellants have not
submitted any evidence as to the criticality of the claimed aspect ratio. Id.
at 8. Indeed, Appellants are hard pressed to assert the criticality of an aspect
ratio of two when claim 2 has an aspect ratio limitation of at least four and
claim 3 has an aspect ratio limitation of at least six. Claims App.
Appellants' argument about drawings not being drawn to scale is
unpersuasive. While patent drawings not designated as being drawn to scale
cannot be relied upon to define precise proportions of elements if the
specification is completely silent on the issue, Hockerson-Halberstadt, 222
F .3d at 956, that does not mean, "that things patent drawings show clearly
are to be disregarded." In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)
( emphasis omitted). Here, Courtemanche '510 discloses a stiffening rod
with a nearly identical shape as Appellants'. To the extent that the prior art
does not explicitly disclose the precise claimed aspect ratio, we reiterate that
a person of ordinary skill in the art would have arrived at such ratio as a
matter of routine optimization. Applied Materials, 692 F.3d at 1297.
Furthermore, Appellants' arguments about the scale of the drawings in
Courtemanche '510 is particularly unpersuasive when considered in light of
the fact that Mr. Denis Courtemanche, the sole inventor of the '510 Patent, is
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Application 13/689, 128
also one of the named inventors in the application under Appeal. Thus,
Appellants are in a superior position to know whether the shape of
element 32 in Figure 3 of Courtemanche '510 is distorted in either the "X"
or "Y" direction of a two-dimensional drawing. Moreover, to the extent that
the aspect ratio of element 32, as depicted in Figure 3, is slightly less than
two, Appellants provide neither evidence nor persuasive technical reasoning
as to why slightly elongating element 32 to have an aspect ratio of two
achieves unexpected results or otherwise required more than ordinary skill.
We have considered Appellants' remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner's findings of fact are supported by a preponderance of the
evidence and that the Examiner's legal conclusion ofunpatentability is well-
founded. Accordingly, we sustain the Examiner's unpatentability rejection
of claims 1-3, 7-10, 17-19, and 31-34.
Claims 23-29
Claim 23 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Claims 24--29 depend, directly or indirectly, from
claim 23. Id. Appellants do not argue for the separate patentability of
claims 23-29 apart from arguments presented with respect to claim 1, which
we have previously considered. We sustain the Examiner's rejection of
claims 23-29. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue
claims).
Unpatentability of Claims 11, 12, and 15
Claims 11, 12, and 15 depend, directly or indirectly, from claim 1.
Claims App. The Examiner rejects these claims over Chaumont,
Courtemanche '510, and Russ and, alternatively, over Courtemanche '705
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and Russ. Final Action 4, 6-7. Appellants do not argue for their separate
patentability as to either alternative ground. Appeal Br. 13-14, 23. We
sustain the Examiner's rejections. 37 C.F.R. § 4I.37(c)(l)(iv).
Unpatentability of Claims 13, 14, and 3 0
over Chaumont, Courtemanche '510, and Fukushima
Claims 13, 14, and 30 depend, directly or indirectly, from claim 1.
Claims App. The Examiner rejects these claims over Chaumont,
Courtemanche '510, and Fukushima. Final Action 4--5. Appellants do not
argue for their separate patentability. Appeal Br. 14. We sustain the
Examiner's rejections. 37 C.F.R. § 4I.37(c)(l)(iv).
Unpatentability of Claims 7, 13, and 14
over Combinations Based on Courtemanche '705
Claims 7, 13, and 14 depend, directly or indirectly, from claim 1.
Claims App. The Examiner rejects these claims over Courtemanche '705 in
combination Fukushima (claim 7), Arakawa (claim 13), and Russ (claim 14).
Final Action 7-8. Appellants do not argue for the separate patentability of
claims 7, 13, and 14 over these grounds of rejection. Appeal Br. 23. We
sustain the Examiner's rejections. 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The decision of the Examiner to reject claims 1-3, 7-15, 17-19,
and 23-34 is 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).
AFFIRMED
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