Ex Parte RehschuhDownload PDFPatent Trial and Appeal BoardDec 28, 201511951711 (P.T.A.B. Dec. 28, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111951,711 12/06/2007 23911 7590 12/30/2015 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Rainer Rehschuh 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. 080437.59276US 8871 EXAMINER PICKETT, JOHN G ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 12/30/2015 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): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAINER REHSCHUH Appeal2013-008651 Application 11/951, 711 Technology Center 3700 Before EDWARD A. BROWN, CHARLES N. GREENHUT, and LYNNE H. BROWNE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rainer Rehschuh (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a baggage container for a motorcycle. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2013-008651 Application 11/951, 711 1. A baggage container for a motorcycle, comprising: an internal wall, which faces toward the motorcycle when the baggage container is attached to the motorcycle; an external wall which faces away from the motorcycle when the baggage is attached to the motorcycle, the external wall being located diametrically opposite from the internal wall at a distance from the internal wall; a front wall, which faces toward a forward area of the motorcycle when the baggage container is attached to the motorcycle; a rear wall, which faces toward a rear direction relative to the motorcycle when the baggage container is attached to the motorcycle; two side walls, which each extend between the internal wall and the external wall; and an air guiding element, for guiding travel wind flowing along the external wall toward a center of a region behind the motorcycle when the baggage container is attached to the motorcycle, wherein the air guiding element is located at its opposite ends on recessed surfaces of one of a recessed region of the external wall and a transition area between the external wall and the rear wall, and an axis through the opposite ends of the air guiding element is transverse to a longitudinal axis of the motorcycle when the baggage container is attached to the motorcycle. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tanaka Sirey Patrin Bott Itakura Chrisco Reichert Trambley us 3,329,323 us 4,393,986 us 4,809,891 us 4,944,439 US D 318,448 us 5,301,829 us 5,558,260 US 2003/0178458 Al 2 July 4, 1967 July 19, 1983 Mar. 7, 1989 July 31, 1990 July 23, 1991 Apr. 12, 1994 Sept. 24, 1996 Sept. 25, 2003 Appeal2013-008651 Application 11/951, 711 REJECTIONS I. Claims 1--4, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Chrisco. II. Claims 1--4, 6, 8, 10, 11, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Patrin and Trambley. III. Claims 1, 2, 5, 7, 8, 10, and 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mangold, Tanaka, and Itakura. IV. Claims 1, 2, 5, 7, 9, 10, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mangold, Sirey, and Itakura. V. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Patrin, Trambley, and Bott. VI. Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chrisco and Reichert. DISCUSSION As an initial matter, we note that although Appellant's arguments identify the reference to which they pertain, they do not identify the rejection contested by the argument, or the particular claim( s) to which the arguments are addressed. Thus, we understand that for each ground of rejection, Appellant argues all of the claims rejected under that ground together. Rejection I We select independent claim 1 as the representative claim, and claims 2--4, 10 and 11, stand or fall with claim 1. The Examiner finds that Chrisco discloses each and every limitation of claim 1. In particular, the Examiner finds that Chrisco discloses "an air 3 Appeal2013-008651 Application 11/951, 711 guiding element (34) capable of guiding travel wind in a predefined direction." Final Act. 2. Arguing that Chrisco's "round bar would only disrupt the wind flow, which would tumble and ultimately rejoin itself on the other side of the handle," Appellant contends that "a generally round hand grip simply does not have any features which could direct air into a motorcycle's rear region." Appeal Br. 12. Responding to this argument, the Examiner notes that "[t]he claim as written merely requires that some of the air that passes by the element in question be directed toward the center rear of the motorcycle." Ans. 12. The Examiner further explains that "[a]ny bar or handle that projects from the surface of the external wall meets the actual claimed function." Id. In addition, the Examiner notes that "'travel wind flowing along the external wall' will inherently be guided toward a center region behind the motorcycle whenever the motorcycle is in motion, as that air is the nearest air to fill in the wake of the motorcycle." Id. In reply to the Examiner's response, Appellant reiterates the prior argument, contending that although, Appellant[] do[ es] not contest the idea that something in the path of travel air can create turbulence in the travel air. The Appellant[] do[es], however, contest the Examiner's assertion that creating turbulence is any form of "guided" flow, or that this turbulent air is in any way "guided" into a motorcycle's rear reg10n. Reply Br. 3. Appellant's argument hinges on an overly-narrow interpretation of the claim language at issue. Specifically, claim 1 merely requires "an air guiding element, for guiding travel wind flowing along the external wall [of 4 Appeal2013-008651 Application 11/951, 711 the baggage container] toward a center of a region behind the motorcycle when the baggage container is attached to the motorcycle." Appeal Br., Claims App. Claim 1 does not require any particular amount of travel wind to be guided, nor does claim 1 precisely define the area to which the travel wind must be guided. Rather, claim 1 broadly claims the guidance of travel wind "toward a center of a region behind the motorcycle." As noted by Appellant, air disrupted by Chrisco' s handle "ultimately rejoin[ s] itself on the other side of the handle" (i.e., it is guided to the other side of the handle). Appeal Br. 12. As the other side of the handle is a location at "a center of a region behind the motorcycle," we see no error in the Examiner's finding that Chrisco discloses an air guiding element as claimed. Appeal Br., Claims App. Further contending "that there is no foundation for the Examiner's unsupported [finding] that the travel wind is 'inherently guided' into the rear region of the motorcycle in the claimed manner," Appellant argues that the Examiner's findings and determination "completely ignor[e] the actual claim language and the teachings of the original disclosure." Reply Br. 4. In support of this argument, Appellant quotes paragraphs 5 and 6 of the Specification. Reply Br. 4--5. Thus, it appears that Appellant is urging us to read limitations of embodiments from the Specification into the claim. We decline to do so as limitations not appearing the claims cannot be relied upon for patentability. See In re Self, 671F.2d1344, 1348 (CCPA 1982). We sustain the Examiner's decision rejecting claim 1, and claims 2--4, 10, and 11, which fall therewith as anticipated by Chrisco. Re} ection II We select independent claim 1 as the illustrative claim, and claims 2- 4, 6, 8, 10, 11, 13, and 15, stand or fall with claim 1. 5 Appeal2013-008651 Application 11/951, 711 The Examiner finds that Patrin discloses all of the limitations of claim 1 except for "the air guiding element ends located in recessed surfaces as claimed." Ans. 4. The Examiner further finds that "Trambley discloses a similar air guiding element (storage rack 18) that is located at its ends (at 20) on recessed surfaces ( 16) of a vehicle to support the device on the mounting surface." Id. Based on these findings, the Examiner concludes that it would have been obvious "to have provided the air guiding storage rack of Patrin with the recessed surface mounting of Trambley to provide a mounting means known in the art to ensure that the base is flush with the surrounding surface, as taught by Trambley (paragraph 17)." Id. Appellant argues that: As with Chrisco, the round tubes of [Patrin's] rack do not teach or suggest the recited air guiding element "for guiding travel wind flowing along the external wall toward a center of a region behind the motorcycle when the baggage container is attached to the motorcycle" - the round tube structure does not direct the wind in any direction. Appeal Br. 13. Appellant's argument is unconvincing for the reasons discussed supra with respect to Chrisco, as air disrupted by Patrin's rack 24 would likewise ultimately rejoin itself on the other side of Patrin's rack- a location at a "center of a region behind the motorcycle." Appellant further argues that Trambley does not disclose an air guiding element. See Appeal Br. 14. In the rejection, Trambley is not relied upon to teach an air guiding element. Thus, Appellant's argument is not convincing as it is not responsive to the rejection as articulated by the Examiner. 6 Appeal2013-008651 Application 11/951, 711 We sustain the Examiner's decision rejecting claim 1, and claims 2--4, 6, 8, 10, 11, 13, and 15, which fall therewith, as unpatentable over the combined teachings of Patrin and Trambley. Re} ection III We select claim 1 as the illustrative claim, and claims 2, 5, 7, 8, 10 and 13-15, stand or fall with claim 1. The Examiner finds that Mangold discloses a baggage container, substantially as claimed. See Final Act. 6. The Examiner further finds that "Tanaka discloses a motorcycle (10) with a similar elongate sporting equipment carrier (12) mounted (via 34, 35) to the vehicle, wherein the equipment is open during transport." Id. Based on these findings the Examiner determines that it would have been obvious to have provided the ski carrier of Mangold with the motorcycle vehicle mounting of Tanaka to provide for transporting sporting goods via a motorcycle as taught by Tanaka, and to protect the skis during transport as taught by Mangold (translation ln. 2). Arranged as such, the recessed surfaces (at 26) of Mangold would still have an aerodynamic effect. Id. at 6-7. The Examiner further finds that "Itakura teaches that baggage located on the rear of a motorcycle may be provided with an air guiding element (spoiler) at the rear end of the carrier." Id. at 7. Based on his previous determination, and this additional finding, the Examiner determines that it would have been obvious Id. to have provided the motorcycle baggage carrier of Mangold in view of Tanaka with the air guiding element of Itakura to further improve the aerodynamics of the device, as suggested by Mangold. Combined as such, the air guiding element of Itakura would be mounted on the recessed surfaces (26 in Mangold) because the recessed surfaces span the entire with of the carrier at its rear (Mangold Fig. 2). 7 Appeal2013-008651 Application 11/951, 711 Arguing that "there is nothing associated with [Mangold's] wedge- shaped box which teaches or suggests guidance of air into a region behind a motorcycle," Appellant contends that in Mangold "the sharp-edged rear end of the skill box would only generate tumbling/turbulent air in its wake." Appeal Br. 15. Appellant similarly argues that Tanaka fails to disclose guidance of air into a region behind the motorcycle. See id. However, neither Mangold nor Tanaka is relied upon to meet this limitation. Rather, the rejection identifies Itakura as teaching an air guiding element which "inherently directs some of the wind toward the center of the rear of the motorcycle." Final Act. 7. Thus, Appellant's argument is not responsive to the rejection as articulated by the Examiner; and therefore, is not convincing. Arguing that "one of skill in the art, seeking to improve air flow and road dirt deposition at the rear of a motorcycle, would not have begun to consider putting a large box on top of an extended-height rack structure, well above the motorcycle," Appellant contends that "even if the iviangold ski box were mounted on the Tanaka tubular rack, the combined apparatus still would have no features which guide air to the rear region of the motorcycle as claimed." Appeal Br. 16. Again, Appellant's argument is not directed to the rejection as articulated by the Examiner. Appellant's argument is not convincing as the rejection relies upon Itakura for its teaching of an air guiding element, and the combined teachings of Mangold, Tanaka, and Itakura to meet the limitation directed to guiding the air flow. Final Act. 6-7. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 8 Appeal2013-008651 Application 11/951, 711 Contending that "the wing-shaped cross-section [ofltakura's spoiler] simply 'splits' the air like a wing, i.e., the airflow above and below the crossbar immediately rejoins, without significant change in direction," Appellant argues that "while the Itakura crossbar may generate a bit of aerodynamic downforce on the top trunk due to its inverted wing-shaped cross-section, it does not direct travel wind toward a center of the region behind the motorcycle." Appeal Br. 17 (emphasis added). As discussed supra, claim 1 merely requires that some undefined amount of travel wind be directed to a center of some region behind the motorcycle. As noted by Appellant, the airflow above and below Itakura's spoiler rejoins behind the spoiler (i.e., at a center of a region behind the motorcycle). Thus, we see no error in the Examiner's finding that Itakura teaches an air guiding element as claimed. Final Act. 7. We sustain the Examiner's decision rejecting claim 1, and claims 2, 5, 7, 10, and 13-15, which fall therewith as unpatentable over the combined teachings of iviangold, Tanaka, and Itakura. Re} ection IV We select claim 1, as the illustrative claim, and claims 2, 5, 7, 9, 10, 13, and 14, stand or fall with claim 1. As Appellant does not specifically address this rejection, we need not summarize the rejection. Referring to Rejection IV, Appellant argues that "[ f]or the same reasons as above, present invention would not result from the combination of Mangold, Sirey and Itakura." Appeal Br. 18. Appellant's arguments discussed supra, are no more convincing when applied to the combined teachings of Mangold, Sirey, and Itakura, than when applied to the combined teachings of Mangold, Tanaka, and Itakura. 9 Appeal2013-008651 Application 11/951, 711 We sustain the Examiner's decision rejecting claim 1, and claims 2, 5, 7, 9, 10, 13, and 14, as unpatentable over the combined teachings of Mangold, Sirey, and Itakura. Rejection V We select claim 5 as illustrative, and claim 14 stands or falls with claim 5. The Examiner finds that "Bott teaches that a similar vehicle rear luggage rack cross member (26) can be a spoiler (col. 2 ln. 27) with a lamellar air foil shape (Fig. 2)." Final Act. 10. Appellant argues that "[a]s with Itakura's inverted wing shape, the air flowing past Bott's inverted airfoil would at most generate a small amount of aerodynamic downforce, but would not direct the travel wind toward the region behind the motorcycle - it would simply rejoin itself downstream of the inverted airfoil." Appeal Br. 19 (emphasis added). Again, Appellant's argument is not responsive to the rejection as articulated by the Examiner, which relies on Patrin to meet the limitations pertaining to guiding the air flow; and the combined teachings of Patrin and Bott for the shape of the air guiding element. Final Act. 10. Moreover, as discussed supra, air that rejoins itself behind the luggage rack cross member is at "a center of a region behind the motorcycle," as required by claim 1. Appeal Br., Claims App. Accordingly, we see no error in the Examiner's findings. We sustain the Examiner's decision rejecting claim 5, and claim 14, which falls therewith, as unpatentable over the combined teachings of Patrin, Trambley, and Bott. 10 Appeal2013-008651 Application 11/951, 711 Rejection VI We select claim 13 as the representative claim, and claim 15 stands or falls with claim 13. The Examiner finds that Chrisco discloses all of the limitations of claim 13 except for "a motorcycle having the baggage container." Final Act. 11. The Examiner further finds that "Reichert teaches that a motorcycle may have a rack (10) to hold luggage." Id. Based on these findings, the Examiner determines that it would have been obvious "to have provided the container with vehicle accessories of Chrisco with the motorcycle mounting means and location of Reichert to support and transport the container on a motorcycle, as is known in the art." Id. Appellant argues that the mounting of Chrisco' s baggage container "on the Reichert rack would not change the lack of any teaching or suggestion in the direction of the claimed invention." Appeal Br. 20. We find no error in the Examiner's findings pertaining to Chrisco as discussed supra. Thus, Appellant's argument does not apprise us of error. Appellant further argues that "[a]s to the Reichert rack itself, not only is this rack not exposed to the travel wind (due to its location directly behind the rider's seat and legs), there are no air-guiding features associated with the rack." Id. Again, Appellant's argument is not responsive to the rejection as articulated by the Examiner, and thus, does not apprise us of error. We sustain the Examiner's decision rejecting claim 13, and claim 15 which falls therewith. DECISION The Examiner's rejections of claims 1-15 are AFFIRMED. 11 Appeal2013-008651 Application 11/951, 711 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)(l )(iv). AFFIRMED msc 12 Copy with citationCopy as parenthetical citation