GENERAL KINEMATICS CORPORATION

Patent Trials and Appeals Board

Jun 26, 2020

13677234 - (D) (P.T.A.B. Jun. 26, 2020)

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.
13/677,234 11/14/2012 Edward Charles Steffes JR. 2109-0122.01 1107
26568 7590 06/26/2020
COOK ALEX LTD
SUITE 2004
200 WEST ADAMS STREET
CHICAGO, IL 60606
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
backup@cookalex.com
docket@cookalex.com
ylugo@cookalex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte EDWARD CHARLES STEFFES, JR. and
PAUL MUSSCHOOT
__________

Appeal 2019-006662
Application 13/677,234
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under 35
U.S.C. § 6(b). For the reasons explained below, we AFFIRM the
Examiner’s rejections.

1 This application was previously the subject of Appeal 2015-005517, dated
February 10, 2017, wherein the Examiner’s rejections were reversed.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “General
Kinematics Corporation.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to a motor mount, and, in
particular, to a reconfigurable motor mount.” Spec. ¶ 1. Apparatus claims 1
and 17 are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A reconfigurable motor mount comprising:
at least one connection point that has only a first
configuration adapted to accept a first arrangement of fasteners
and a second configuration adapted to accept a second
arrangement of fasteners, the first and second arrangements of
fasteners being different from each other.

REFERENCES RELIED ON BY THE EXAMINER
Name Reference Date
Fietsch, Jr. US 449,039 Mar. 24, 1891
Langdon US 3,145,959 Aug. 25, 1964
Beith US 3,329,468 July 4, 1967
Pansky et al. (“Pansky”) US 3,857,611 Dec. 31, 1974
THE REJECTIONS ON APPEAL
Claims 1–8 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langdon and Pansky.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Langdon, Pansky, and Fietsch, Jr.
Claims 10–12, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langdon, Pansky, and Beith.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Langdon, Pansky, Beith, and Fietsch, Jr.
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ANALYSIS
The rejection of claims 1–8 and 17
as unpatentable over Langdon and Pansky
Appellant argues all these claims (i.e., 1–8 and 17) together.3 See
Appeal Br. 3–6. We select claim 1 for review, with the remaining claims
(i.e., claims 2–8 and 17) standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2018).
The Examiner primarily relies on the teachings of Langdon for
disclosing the recited motor mount, but acknowledges that Langdon does not
disclose “that the mount is reconfigurable” or a “connection point only
having a first configuration and a second configuration” as recited. Final
Act. 2, 3. The Examiner relies on Pansky for such teachings (including
inserts that permit such limited configurations). See Final Act. 4. The
Examiner reasons that it would have been obvious “to modify [] Langdon to
have the invertible inserts as disclosed by Pansky.” Final Act. 6. This is
because “Pansky states that such a modification enables the device to easily
accommodate different fasteners or stud arrangements.” Final Act. 6
(referencing Pansky 1:23–25) (“to provide a wheel casting that can easily be
accommodated on at least the three basic categories of stud arrangements”).
Appellant initially contends that “both patents are not directed to
motor mounts,” but does not dispute that Langdon is. Appeal Br. 3; see also
Reply Br. 2 (“Langdon is a small motor mounting arrangement”).
Regarding Pansky, the Examiner explains, “the Pansky reference is
reasonably pertinent to the particular problem [with which] Appellant was

3 “[A]pplicant submits that the arguments raised above apply with equal
force to the rejection of claim 17.” Appeal Br. 6; see also Reply Br. 4.
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concerned.” Ans. 12 (referencing Spec. ¶ 3 discussing how the present
disclosure provides a reconfigurable motor mount); see also id. at 14. The
Examiner references Pansky as likewise addressing a reconfigurable
mounting arrangement. See Ans. 12–13 (referencing Pansky 1:23–25).
We have been instructed that
‘[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.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In
other words, ‘familiar items may have obvious uses beyond their
primary purposes.’ KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
[420], 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007).
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir.
2007). Thus, the fact that Pansky may not specifically pertain to a “motor
mount,” as does Langdon (see Reply Br. 2), does not preclude the
Examiner’s reliance on Pansky because Pansky addresses a problem similar
to that addressed by Appellant. Further, Appellant does not explain how,
since Pansky clearly pertains to a wheel mount that can accommodate
various bolt hole arrangements (see generally Pansky), Pansky would not
have been logically commended to an inventor’s attention for consideration.
We thus do not fault the Examiner’s additional reliance on Pansky in
rejecting claim 1.
Appellant also addresses the elongated openings in Langdon’s feet
stating, “the elongated holes 21 permit placement of the bolts or screws at
any distance along the length of the elongated holes 21.” Appeal Br. 4. As
correct as this may be, Appellant is not addressing Pansky’s teachings of
installing inserts into an elongated opening thereby blocking off all but a
single, round, bolt hole. See Pansky Figs. 1–6 and related discussion. It
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would appear that Appellant is improperly arguing the art 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).
Further, and regarding Langdon, Appellant states, “there is another
concern at play,” i.e., “Langdon was fabricated with vibration explicitly in
mind.” Appeal Br. 4; see also Reply Br. 2–3. As a consequence, Appellant
argues that Langdon “accommodates vibration . . . by limiting the number of
pieces which vibrations could act on.” Appeal Br. 4; see also Reply Br. 3.
From this premise, Appellant contends that a skilled person, “when
concerned with vibration, would not add more items to the connection
between the motor and the base.” Reply Br. 2. Hence, “[a]dding parts adds
to the uncertainty of the behavior of the device in transmitting vibration, and
one skilled in the art would not opt for the more uncertain outcome.” Reply
Br. 3.
The Examiner explains, “Langdon explicitly states that the legs (17
and 18) and interengaging portions (28 and 29) are what provide the
vibration damping and makes no mention[] of how the fasteners contribute
to such vibration damping.” Ans. 13. There is merit to the Examiner’s
statement because Langdon clearly states, “[i]n addition, along with leg
sections 17 and 18, the complementary interengaging sections 28 and 29
provide a resilient system for preventing or limiting the transmission of
motor vibrations from the motor to base 11.” Langdon 3:16–20. Hence, the
manner of fastening Langdon’s mount to the base is not identified or
described as affecting motor vibration; instead, such vibration is dampened
via legs 17 and 18, and sections 28 and 29. Accordingly, there is merit to
the Examiner’s statement, “it is the Examiner’s position that the proposed
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modification would have no detrimental impact on the vibration dampening
capabilities of Langdon.” Ans. 13. Appellant does not explain otherwise.
Thus, we are not apprised of Examiner error by modifying Langdon with the
addition of Pansky’s inserts. See Ans. 14 (“the only modification would be
to form the inserts of Pansky to fit into the openings in Langdon”).
Appellant also contends that the Examiner relied on “impermissible
hindsight” by “using [A]pplicant’s disclosure to piece together the prior art.”
Appeal Br. 5. Such contention is not persuasive in view of Pansky’s
disclosure of employing inserts to accommodate different bolt patterns,
which the Examiner relied upon when combining Langdon and Pansky. See
Final Act. 6.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in combining Langdon and Pansky, or in concluding that
this combination renders claims 1–8 and 17 obvious. We sustain the
Examiner’s rejection of claims 1–8 and 17 as unpatentable in view of
Langdon and Pansky.
The rejection of (a) claim 9 as unpatentable over Langdon, Pansky, and
Fietsch, Jr.; (b) claims 10–12, 15, and 16 as unpatentable over Langdon,
Pansky, and Beith; and, (c) claims 13 and 14 as unpatentable over Langdon,
Pansky, Beith, and Fietsch, Jr.
Appellant does not dispute the Examiner’s additional reliance on
Fietsch, Jr. or Beith in rejecting these claims, but instead relies on the
arguments presented above regarding the combination of Langdon and
Pansky. See Appeal Br. 6; Reply Br. 4. Because we are not persuaded by
Appellant’s arguments regarding Langdon and Pansky, we sustain the
rejection of (a) claim 9 as unpatentable over Langdon, Pansky, and Fietsch,
Jr.; (b) claims 10–12, 15, and 16 as unpatentable over Langdon, Pansky, and
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Beith; and, (c) claims 13 and 14 as unpatentable over Langdon, Pansky,
Beith, and Fietsch, Jr.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–8, 17 103(a) Langdon, Pansky 1–8, 17
9 103(a) Langdon, Pansky,
Fietsch, Jr.
9
10–12, 15, 16 103(a) Langdon, Pansky,
Beith
10–12, 15,
16

13, 14 103(a) Langdon, Pansky,
Beith, Fietsch, Jr.
13, 14
Overall
Outcome
1–17
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED