Ex Parte Rehschuh

Patent Trial and Appeal Board

Dec 28, 2015

11951711 (P.T.A.B. Dec. 28, 2015)

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
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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
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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.
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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.
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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).
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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).
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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.
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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.
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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.
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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
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