Richard Larry. Sunsdahl et al.Download PDFPatent Trials and Appeals BoardMay 22, 202014478689 - (D) (P.T.A.B. May. 22, 2020) Copy Citation 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. 14/478,689 09/05/2014 Richard Larry SUNSDAHL PLR-15-1688.02P-01-US-e 6410 93175 7590 05/22/2020 Faegre Drinker Biddle & Reath LLP - Polaris 300 N. Meridian Street Suite 2500 Indianapolis, IN 46204 EXAMINER VANAMAN, FRANK BENNETT ART UNIT PAPER NUMBER 3616 NOTIFICATION DATE DELIVERY MODE 05/22/2020 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): inteas@faegredrinker.com sue.meyer@polaris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD LARRY SUNSDAHL, AARON DAVID DECKARD, MARCUS JOHANNES TULLEMANS, JASON CARL PLUGGE, ALAN A. MEYER, and BRIAN MICHAEL SAFRANSKI Appeal 2018-000857 Application 14/478,689 Technology Center 3600 Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and JEREMY M. PLENZLER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Polaris Industries Inc., appeals from the Examiner’s decision to reject claims 22–28, 30–38, and 40–53. Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Polaris Industries, Inc. Appeal Br. 3. Appeal 2018-000857 Application 14/478,689 2 We AFFIRM and enter NEW GROUNDS OF REJECTION in accordance with 37 C.F.R. § 41.50(b).2 CLAIMED SUBJECT MATTER The claims are directed to “side-by-side all terrain vehicles having at least a pair of laterally spaced apart seating surfaces.” Spec. ¶ 2. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. An all-terrain vehicle, comprising: a frame, comprising a front frame portion, a mid frame portion and a rear frame portion, the rear frame portion comprising a lower rear frame portion and an upper rear frame portion; a front suspension coupled to the front frame portion; at least two front wheels coupled to the front suspension; a rear suspension coupled to the rear frame portion; at least two rear wheels coupled to the rear suspension; a cab intermediate the front and rear wheels; a seating area within the cab and supported by the mid frame portion, comprising side by side seats each having a seat back and a seat bottom; an engine supported by the rear frame portion, the engine positioned rearwardly of the seating area, and each seat bottom having a seating surface with a low point of the seating surface being below a top of the engine, the spaced-apart seating surfaces including a driver seating surface and a passenger seating surf ace; a fuel tank being positioned underneath one of the seat bottoms; 2 We note that under 37 C.F.R. § 42.73(d)(3), “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent . . . [a] claim that is not patentably distinct from a finally refused or canceled claim,” such as those that were at issue in IPR2014-01427. Appellant should consider this provision when prosecution is re-opened in this matter. Appeal 2018-000857 Application 14/478,689 3 a transmission comprising a continuously variable transmission positioned rearwardly of the seating area; the front and rear wheels being drivingly coupled to the transmission; the lower rear frame portion supporting at least one of the engine and transmission rearward of the seating area; and outermost points of the vehicle in a width-wise direction define a width of less than 54 inches. REFERENCES The prior art relied upon by the Examiner is: Vittone Hill Hickey Enokimoto Furuhashi US 3,366,411 US 3,407,893 US 3,709,314 US 5,251,713 US 5,327,989 Jan. 30, 1968 Oct. 29, 1968 Jan. 9, 1973 Oct. 12, 1993 July 12, 1994 Nash Hypes Bataille US 2004/0195797 A1 US 2005/0173180 A1 US 2006/0180383 A1 Oct. 7, 2004 Aug. 11, 2005 Aug. 17, 2006 REJECTIONS Claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hypes and Furuhashi. Non-Final Act. 2. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hypes, Furuhashi, and Nash. Non-Final Act. 5. Claims 26 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hypes, Furuhashi, and Bataille. Id. Claims 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hypes, Furuhashi, and Vittone. Non-Final Act. 6. Claims 43 and 48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey and Enokimoto. Non-Final Act. 7. Appeal 2018-000857 Application 14/478,689 4 Claims 44–47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, and Hypes. Non-Final Act. 9. Claim 49 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, and Bataille. Non-Final Act. 10. Claims 50 and 51 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, and Vittone. Id. Claims 22, 27, 28, 30, 31, 33, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, and Furuhashi. Non-Final Act. 11. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, Furuhashi, and Nash. Non-Final Act. 12. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, Furuhashi, and Hill. Id. Claims 26 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, Furuhashi, and Bataille. Non-Final Act. 13. Claims 35, 37, 38, and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, Furuhashi, and Hypes. Id. Claims 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hickey, Enokimoto, Furuhashi, and Vittone. Non-Final Act. 14. Appeal 2018-000857 Application 14/478,689 5 OPINION Obviousness Hypes/Furuhashi – Claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53 Appellant argues claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53 as a group.3 We select claim 22 as representative. Claims 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53 stand or fall with claim 22. See 37 C.F.R. § 41.37(c)(iv). The Examiner finds that Hypes teaches the majority of features recited in claim 22, but fails to teach that “outermost points of the vehicle in a width-wise direction define a width of less than 54 inches” and “a fuel tank being positioned underneath one of the seat bottoms.” See Non- Final Act. 2–4. The Examiner reasons that it is desirable for an off-road vehicle to have a width permitting use of known trails that were 50 or 54 inches wide. Id. at 3. The Examiner elaborates that the Honda Foreman and Hart’s Hunter are examples of vehicles that illustrate the desirability of such off-road use. Ans. 4. As for the fuel tank location, the Examiner finds that “Furuhashi . . . teach[es] that it is well known to provide a vehicle with a seat . . . and . . . a fuel tank . . . beneath the seat.” Non-Final Act. 4. Appellant argues that the Examiner’s reasoning for modifying Hype’s teachings to have the recited width is “not supported by actual evidence.” Appeal Br. 23; see also Reply Br. 2 (“the Examiner still provides no 3 Appellant references certain other claims involved in the rejection, but those statements do not rise to the level of separate arguments. For example, Appellant states, generally, that “[e]ach of the claims discussing width is separately appealed hereby (claims 22, 27, 31, 43, 48),” and simply reproduces the language of claim 43 (Appeal Br. 25), which does not constitute separate argument. See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Appeal 2018-000857 Application 14/478,689 6 evidence”). Appellant goes on to point out that the Honda Foreman is a straddle-type ATV with a single seat that sits above the engine and Hart’s Hunter has a side-by-side configuration with the seats above the engine. Reply Br. 2. Appellant’s argument that the Examiner has not provided “actual evidence” to support the reason for combining the references is not persuasive because the law does not require “actual evidence.” What is required is that the Examiner articulate reasoning with a rational underpinning to support the conclusion of obviousness. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Manual of Patent Examining Procedure (MPEP) § 2144.06 (8th Ed., Rev. 9, Aug. 2012). The Examiner has provided reasoning with a rational underpinning by explaining that because trails were known to be 50 or 54 inches wide, it was desirable to configure vehicles to fit on those trails. Non-Final Act. 3. Nothing in Appellant’s argument undermines this reasoning. Further, Appellant’s argument is not persuasive because the comments regarding the Honda Foreman and Hart’s Hunter are inapposite. The Examiner relies on these references to illustrate the desirability of an off-road vehicle that fits trails that are 50 or 54 inches in width, not for disclosure of any of the limitations of the claimed subject matter. Also regarding rationale, Appellant argues that the Examiner’s reason for combining the references is hindsight because the source of that information is Appellant’s Specification. Appeal. Br. 24. It is impermissible hindsight to imbue the person of ordinary skill in the art with Appeal 2018-000857 Application 14/478,689 7 knowledge that is not shown in the prior art. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). That is not the case here. The Specification discloses, as background, that most side-by- side all-terrain vehicles (ATVs) have a width of at least 54 inches and most parks have a maximum trail width of about 50 inches. Spec. ¶ 3. This background disclosure reflects what was known in the art. Consequently, the Examiner’s reasoning is not impermissible hindsight because it does not imbue the person of ordinary skill with knowledge that was not shown in the prior art. Stated in a positive sense, the Examiner only attributes knowledge of the prior art to the person of ordinary skill in the art. Given Appellant’s argument, it is undisputed that these references show that narrow ATV’s (those having a width of 50 or 54 inches), which include side-by-side ATV’s, were known in the art. In further support of the rejection rationale, the Examiner points out that “it is well held that the adjustment of dimensions or scale of a device, absent a positive teaching that such an adjustment cannot be made or is expressly shown as being prohibited, falls well within the skill level of the ordinary practitioner.” Ans. 2. Appellant does not effectively counter this finding. In fact, Appellant never states what supposed challenges prohibit such narrowing other than to label various features as width-impacting. In addition, Appellant never points out any specific hurdle they overcame in designing a vehicle having a narrow width and the supposedly width- impacting features, nor does Appellant explain any specific solution, other than to assert that they were the first to put all of the claimed features into a narrow ATV. Appeal 2018-000857 Application 14/478,689 8 As an example, Appellant points out that achieving the claimed side- by-side seating and seat bottom below the top of the engine “has an impact on a needed width of the vehicle.” Appeal Br. 23. This is presumably so because once the seats are lowered below the top of the engine, various components that would normally run beneath the seat must be accommodated in different ways that previously led to vehicles wider than 50 or 54 inches. Appellant does not explain, however, nor does the Specification detail, any particular solutions to these problems. Appellant further contends that the Examiner “continues to attempt to stuff additional width-impacting components into Hypes while continuing to state that the width is a feature that can just be chosen and implemented without consideration of the vehicle more generally.” Id. Appellant, however, does not explain how such consideration would present engineering challenges that could not be overcome through the ordinary skill in the art. Appellant also contends that fitting the claimed components into a vehicle having a width of no greater than 50 or 54 inches is not an obvious variation. Appellant even goes so far as to argue that the record is devoid of “any rear-engine vehicle having powered front wheels with side-by-side seating where a width of 54 inches or less was achieved.” Appeal Br. 25. This is basically an assertion that the Examiner did not show the claimed subject matter was anticipated. Such a contention carries little weight given the rejection is based on obviousness. Generally, a change in the size or the dimensions of an apparatus is not a patentable distinction. See e.g., In re Rose, 220 F.2d 459, 463 (CCPA 1955) (“the size of the article under consideration . . . is not ordinarily a matter of invention”), Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Appeal 2018-000857 Application 14/478,689 9 Cir. 1984) (where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device). In sum, without any explanation of what specific problems arise and what the solutions are to such problems, Appellant’s labeling of various features as width-impacting amounts to nothing more than attorney argument. By not identifying in the Specification any particular solution to the purported problems associated with the recited width limitations, Appellant, itself, implicitly acknowledges that there is no particular challenge in designing a side by side ATV meeting these width limitations. See 35 U.S.C. § 112, first paragraph (“The specification shall contain a written description of the invention . . . to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”). “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Here, because that information is not provided in the Specification, Appellant must be relying on the information being known in the art in order to comply with the enablement requirement. Appellant also contends that the Declaration of Dr. John Moskwa shows the lack of a reasonable expectation of success. Appeal Br. 25–29. Dr. Moskwa testifies that vehicle design is not a matter of routine and common substitution; rather, modification to one component has a cascade Appeal 2018-000857 Application 14/478,689 10 effect on the rest of the system. Appeal Br. 26–27 (citing Moskwa Dec. 10). Dr. Moskwa adds that creation of a vehicle with a significantly lower center of gravity than prior art ATVs created the framework to permit making a narrower (50 or 54 inch) ATV because the lower center of gravity permitted more stable cornering. Appeal Br. 27–28 (citing Moskwa Dec. 20–21). We appreciate, and agree with, the contention that vehicle design is a process where modification of one component impacts other components and performance. Yet, Appellant’s very general contention addresses all design changes and does not persuasively explain why the proposed modification in particular lacks a reasonable expectation of success. Nor is the contention regarding a low center of gravity persuasive. Appellant contends that the claimed narrow width is only possible with a low center of gravity, yet claim 22, itself, undermines that assertion in that claim 22 does not require a low center of gravity. Further, we agree with the Examiner, and Appellant does not dispute, that Hart’s Hunter is a side-by- side ATV having a width of 50 inches, and there is no evidence in the record that Hart’s Hunter had a stability problem. Ans. 5–6; see also Reply Br. 3 (pointing out that Hart’s Hunter differs in some respects from the claimed subject matter, but making no contentions regarding stability). Because the Moskwa Declaration relies mainly on unclaimed features, we do not find the evidence persuasive of Examiner error. Regarding the recited fuel tank location, the Examiner reasons that it would have been obvious to position the tank underneath one of the seat bottoms as claimed because it would provide compact storage of the fuel source, permitting other vehicle spaces to be used for carrying cargo rather than storing fuel. Non-Final Act. 4. Appellant urges that such a position Appeal 2018-000857 Application 14/478,689 11 would raise the seat, and it is a generic motivation that supports placing a fuel tank anywhere. Appeal Br. 29. We agree with the Examiner that the proffered rationale is not generic. Rather, Furuhashi specifically illustrates a fuel tank below a seat. Ans. 7; Furuhashi, 12:23–26, Fig. 19, element 120. Appellant’s assertion that placing the fuel tank under a seat comes with the tradeoff of raising the seat does not negate the proffered rationale. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). Appellant simply points out a negative aspect without weighing it against the benefits. See generally Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Appellant has not demonstrated error in the rejection of claim 22 regarding the prior art showing each limitation or in the reason for combining the references. Before making a conclusion on obviousness, we consider Appellant’s arguments and evidence regarding objective indicia of nonobviousness. Appellant makes arguments regarding commercial success, industry praise, and copying. To be relevant, secondary evidence of non-obviousness must be commensurate in scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). There must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. In re Appeal 2018-000857 Application 14/478,689 12 GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-obviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of proving commercial success (and other types of secondary considerations) during prosecution is on the applicant. See In re Huang, 100 F.3d 135, 139–140 (Fed. Cir. 1996) (“In the ex parte process of examining a patent application . . . the PTO lacks the means or resources to gather evidence which supports or refutes the applicant's assertion that the sales constitute commercial success.”); see also In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008). The burden of proving a nexus between the secondary considerations and the merits of the claimed invention during prosecution is also on the applicant or patent owner. Huang, 100 F.3d at 140 (“In sum, Huang simply has not carried his burden to prove that a nexus existed between any commercial success and the novel features claimed in the application.”). “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (internal citations omitted) (emphasis in original). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. (emphasis in original). That is, the evidence of secondary considerations cannot be due to what is already known in the art. Appeal 2018-000857 Application 14/478,689 13 Appellant contends that the evidence provided “show[s] the commercial success of the vehicles that embody the claims of U.S. Patent 8,596,405, which are the same vehicles that embody the claims of the present application.” Appeal Br. 30; see also id. at 32 (“while Dr. Jarosz shows a nexus between the success and the elements of the claims of the ’405 Patent, many of those same claim elements exist in the present application and the nexus between the success and the present application is also apparent”). Initially, we note that the evidence of secondary considerations submitted in this appeal was ultimately unpersuasive in the proceeding in which it was submitted for U.S. Patent 8,596,405 (“the ’405 patent”), even with a presumption of nexus. See IPR2014-001427, Paper 77.4 The only meaningful differences between the claims at issue in the ’405 patent determined unpatentable after considering the evidence of secondary considerations and claim 22 in this appeal are the recitation of the particular vehicle width and fuel tank position. That is, the only purportedly novel features of claim 22 are the particular vehicle width and fuel tank location. Appellant contends that “Dr. Jarosz establishes a nexus between the commercial success and the claims at issue by referring to a January 20, 2007 review of the Polaris RZR vehicle by Dave Beckstrom.” Id. at 32. Mr. Beckstrom’s review, however, is not evidence of commercial success that is tied to any particular feature of the claims, let alone the purportedly novel features of claim 22. In fact, Appellant offers no argument or evidence suggesting that the recited vehicle width or fuel tank location are 4 That decision is final and has not been appealed by the Patent Owner. Appeal 2018-000857 Application 14/478,689 14 responsible for any of the alleged commercial success. Rather, by Appellant’s own admission, the alleged commercial success is due to the unpatentable combination of features recited in the ’405 patent. That is, Appellant is essentially arguing that claim 22 is patentable based on the commercial success of a combination of elements already determined to be unpatentable. Appellant cannot argue patentability based on the combination of features recited in the claims from the ’405 patent, which were cancelled in IPR2014-01427. See 37 C.F.R. § 42.73(d)(3). Dr. Jarosz declares that in 2008 when the North American Industry was down 23 percent to that point in the year, Polaris’s business grew 22 percent due to strength in high-margin product lines, including the side-by- side Ranger RZR. Appeal Br. 30; Jarosz Decl. ¶ 58. Dr. Jarosz states only that the Ranger was a product line that led to 22 percent growth for Polaris, but does not quantify what portion of that growth is attributable to the Ranger RZR. See Ans. 9 (noting the lack of market share data). Dr. Jarosz also stated that Polaris’s side-by-side sales “materially” outpaced the industry while the industry was in a market downturn in 2008 and also in 2010. Appeal Br. 31; Jarosz Decl. ¶¶ 59–60. Dr. Jarosz does not quantify what portion of Polaris’s side-by-side sales are attributable to the Ranger RZR. See Ans. 9 (noting that the portion of side-by-side sales attributable to the Ranger is not identified). Dr. Jarosz states that in October 2007, ATV 4-Wheel Action reported that the Ranger RZR would walk all over competition like the Yamaha Rhino because the RZR was narrower, handled better, and had a low center of gravity. Appeal Br. 31; Jarosz ¶ 62. Handling and a low center of gravity are not claimed features. Although claim 22 recites a width of 54 inches, the Appeal 2018-000857 Application 14/478,689 15 comparison to the Rhino is of little value without knowing the width of the Rhino. Further, Appellant provides no explanation as to how that width is tied to the alleged commercial success. Dr. Jarosz states that ATV 4-Wheel Action reported that Polaris redefined the sport UTV category with introduction of the Ranger RZR 800 4x4. Appeal Br. 31; Jarosz Decl. ¶ 63. Although redefining a product category is praise and suggests commercial success, it is not quantifiable. For example, the comment does not provide statistical sales data in terms of total sales in dollars or market share. In sum, Dr. Jarosz’s Declaration supports a general assertion that the Ranger RZR achieved some commercial success, but the Declaration lacks the specificity needed to put that success in context. As noted above, Appellant also submits the Declaration of Dr. John J. Moskwa, which states, inter alia, that Polaris invented a unique ATV system that “resulted in a side-by-side vehicle with an extremely low center of gravity while still placing some components under the seats. The low center of gravity was the result of the particular system design that Polaris invented,” namely “by placing the engine behind the seats” and locating “the seat bottoms below the top of the engine.” Moskwa Dec. ¶ 42. Even with this Declaration evidence, Appellant does not provide any explanation as to how the design itself was innovative other than to point out that it provides a low center of gravity. Nothing in the claims, however, requires a low center of gravity. Essentially the only requirement related to a low center of gravity is having the seat pan below the top of the engine, but because of the generic nature of the remainder of the limitations, this could be achieved simply by raising the Appeal 2018-000857 Application 14/478,689 16 engine rather than lowering the seats. In such an example, the vehicle would not have the low center of gravity touted by Dr. Moskwa. It might also provide room to accommodate features Appellant describes as width- impacting. Because the Declaration relies mainly on unclaimed features, we do not find the evidence persuasive. As with the Moskwa Declaration, the Jarosz Declaration mainly touts the important feature of low center of gravity. Jarosz Dec. ¶ 31. Likewise, Rintamaki touts both the low center of gravity and trail compliant width. Rintamaki ¶ 4. Again, because nothing in the claims actually requires a low center of gravity and because Appellant does not explain any specific innovation to overcome the width issue, we do not find this evidence persuasive. As to the commercial success touted by Rintamaki, again much of this is tied to the RZR having a low center of gravity, which is not a claimed feature. Id. at ¶ 12. With respect to the alleged industry praise, much of that evidence merely touts the Ranger RZR generally without respect to any specific feature, let alone claimed features. The little praise that is tied to specific features is directed toward the low center of gravity. See, e.g., Jarosz Dec. ¶¶ 62, 70. As with commercial success, evidence of industry praise is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Accordingly, the alleged industry praise is weak evidence of patentability. As to copying, Appellant lists five claimed features allegedly found in Arctic Cat’s purportedly copied vehicle, but provides no analysis by showing the actual vehicle and how the alleged features are met. The list also omits numerous features found in the claims that Appellant does not Appeal 2018-000857 Application 14/478,689 17 address viz. an Arctic Cat vehicle. Moreover, there is no evidence that Arctic Cat actually copied Appellant’s product. “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). Appellant’s allegation of product similarity and infringement are not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). Although Appellant includes a list of additional claims that recite features allegedly included in the Polaris Ranger RZR vehicle, there is no meaningful analysis how any of those features contributed to the alleged commercial success or industry praise. Weighing the evidence before us, the Examiner’s strong case of obviousness outweighs Appellant’s weak evidence of patentability. For the reasons set forth above, we sustain the Examiner’s rejection of claims 22, 23, 27, 28, 30, 31, 34–38, 43–48, 52, and 53. Because the Examiner appears to dismiss portions of the Declaration evidence, which we discuss in greater detail, we designate the affirmance as New Grounds of Rejection. Hypes/Furuhashi/Nash – Claims 23 and 24 Claim 23 depends from claim 22, and claim 24 depends from claim 23. Appellant relies on the patentability of claim 22, and makes no separate argument in response to the rejection of these claims over Hypes, Furuhashi, and Nash. Appeal Br. 45; see also id. at 60. Because we are not apprised of error in the rejection of claim 22, we are also not apprised of error in the rejection of claims 23 and 24. Appeal 2018-000857 Application 14/478,689 18 Hypes/Furuhashi/Bataille – Claim 26 and 32 Claims 26 and 32 each ultimately depend from claim 22, and further recite that “a battery [is] positioned underneath one of the seat bottoms.” The Examiner finds that Bataille teaches this additional feature and proposes further modifying the teachings of Hypes accordingly. Non-Final Act. 6. Appellant argues that the Examiner has provided motivation for including a battery in the vehicle but not for the placement of that battery. Appeal Br. 45–46. The Examiner counters, however, that Bataille is used for the battery location and that there are numerous reasons for placing the battery in the claimed location. Ans. 20–21. The Examiner explains, for example, that placement of a battery in such a location is beneficial for numerous reasons, such as adjusting the center of gravity of the vehicle, placing the battery weight longitudinally in the vehicle in order to facilitate the weight distribution, ensuring that the battery is not located in a space directly around the engine where it would suffer from detrimental thermal rise damage and/or ensuring that the load carrying spaces of the vehicle are not reduced in volume by the location of the battery proximate the load deck. Id. at 21. Appellant does not address the more specific rationale provided in the Answer. Accordingly, we sustain the Examiner’s rejection of claims 26 and 32. Hypes, Furuhashi, and Vittone – Claims 41 and 42 Claim 41 depends from claim 22 and further recites “an engine cover supported by the upper rear frame portion and extending over one of the engine and transmission rearward of the seating area, the engine cover comprising a floor and upstanding sidewalls.” Claim 42 depends from claim 41 and further recites that “the engine is completely under the engine cover.” Appeal 2018-000857 Application 14/478,689 19 Appellant does not dispute the rejection of claim 41, other than reasserting the arguments presented with respect to claim 22. Appeal Br. 46. Rather, Appellant argues that the rejection of claim 42 should be reversed because no references teach the engine being completely located beneath the engine cover. Id. The Examiner does not find that any reference provides such a teaching, but, instead, asserts that it would have been obvious to completely cover the engine “to ensure that the engine is protected from the elements, and that it is desirable to ensure that persons external to the vehicle do not unexpectedly or unintentionally come into contact with the engine.” Ans. 21. The Examiner goes on to explain that “engine placement completely under a cover . . . is notoriously old and well known, as can be seen from the great majority of motorized vehicles in use for the past 50–75 years.” Ans. 22. Appellant does not address, let alone persuasively contest, this finding or reasoning by the Examiner. Accordingly, we sustain the Examiner’s rejection. Hickey/Enokimoto – Claims 43 and 48 Claim 43 is independent, and similar to claim 22, with the addition of “a modular engine assembly.” Appellant presents a number of contentions that are similar to those determined unpersuasive as explained above. See Appeal Br. 47–49. Appellant additionally contends that the Examiner’s rejection fails to show a modular unit having fixed relationships that are then capable of being mounted to the frame. Id. at 47. The Examiner responds that Hickey’s “engine, transmission and at least a portion of the rear axle assembly . . . can be considered a modular engine assembly” and that this assembly “may be mounted to – or removed from – the frame as a unit.” Appeal 2018-000857 Application 14/478,689 20 Ans. 23. Again, Appellant does not address, let alone persuasively contest, this explanation. Appellant additionally disputes the Examiner’s rejection as it relates to claim 43’s recitation that “the transmission compris[es] a continuously variable transmission.”5 Appeal Br. 50–54. Specifically, Appellant disputes the Examiner’s rationale for use of a CVT. Appellant contends that “[o]ne of skill in the art would not combine a CVT with the vehicle of Hickey, doing so would make the vehicle unsuitable for its intended purpose.” Id. at 54. Appellant contends that “one of skill in the art recognizes that CVT’s are not desirable for high torque engines such as those used by Hickey,” and, therefore, “would readily recognize that it is not advisable/possible to combine a CVT with Hickey.” Id. at 50. The Examiner explains that [i]t is well known to be within the skill of the ordinary practitioner to substitute one transmission for another . . . and it would have been obvious . . . to provide the transmission taught by Hickey as a continuously variable transmission for the purpose of allowing an infinitely variable transmission ratio beneficially allowing more operational ratios than available with a fixed-speed transmission, and/or for the purpose of reducing costs over the use of a geared transmission. Non-Final Act. 8. The Examiner explains that although “Appellant refers to an engine having a particular displacement and being capable of delivering a particular torque,” these specific details are not disclosed in Hickey. Ans. 25. Rather, “Hickey . . . describes the engine as ‘an internal combustion engine 12’” and the engine’s “operating specification is not disclosed in the 5 This limitation also appears in claim 22 and the discussion above applies equally to claim 22. Appeal 2018-000857 Application 14/478,689 21 reference.” Id. (citing Hickey 1:63). That is, the Examiner is relying on these general teachings from Hickey when explaining that the features of claim 43 would have been obvious. Appellant’s contentions regarding the use of a CVT are based on the use of a high torque engine, which is not the basis for the Examiner’s rejection, as explained above. Appellant does not provide separate argument for the patentability of claim 48. For the reasons set forth above, we are not apprised of error in the rejection of claims 43 and 48. Hickey/Enokimoto/Hypes – Claims 44–47 Claim 44 depends from claim 43 and recites that “the modular engine assembly is mounted to the frame by first and second mounting assemblies, where the first mounting assembly is coupled to the rear axle assembly.” Claims 45–47 depend from claim 44. The Examiner finds that Hypes teaches the features recited in claim 44 and proposes further modifying the teachings of Hickey accordingly. Non-Final Act. 9. Appellant disputes the Examiner’s finding related to Hypes, but does not allege any particular error in the rationale provided. Appeal Br. 54–55. Appellant contends that the Examiner is in error because “bearing 48 and/or axle 50a of Hypes is received from below” while “oppositely, transaxle casing 72 appears to mount from above.” Appeal Br. 54. As such, Appellant argues that “[t]he orientation of the cited mounting structures of Hypes do not permit an engine, transmission, and portion of the rear axle to be mounted as a unit” as claimed. Id. The Examiner responds that “Hypes is not relied upon to teach the functional aspect of the engine, transmission and portion of the rear axle assembly to be mountable as a unit (as this is deemed covered by the base reference to Hickey, as discussed more fully in Appeal 2018-000857 Application 14/478,689 22 the rejection of claim 43).” Ans. 28. The Examiner relies on “Hypes . . . to teach the first, second and third mounting assemblies as specified in claims 44–47.” Id. The Examiner provides a detailed explanation of “the installation of transaxle 72 from below [being] fully allowed by the structure disclosed by the Hypes reference” (id. at 27), and explains that “the structure taught by Hypes [being] capable of being mounted as a unit . . . speaks to the conceptual compatibility of the reference in the combination” (id. at 28). Again, Appellant offers no rebuttal to the clarification of the rejection provided in the Examiner’s Answer, leaving effectively no dispute as to Hypes teaching the first and second mounting assemblies. And, as noted above, there is no dispute as to the Examiner’s rationale including those mounting assemblies in combination with the teachings of Hicks. Appellant does not argue claims 45–47 separately. As such, we are not persuaded of error in the Examiner’s rejection of claims 44–47. Hickey/Enokimoto/Bataille – Claims 49 Claim 49 ultimately depends from claim 43 and further recites that “a battery [is] positioned underneath one of the seat bottoms.” Claim 43 recites that the “modular engine assembly [is] supported by the frame rearward of the seating area.” Appellant argues that the Examiner inconsistently uses Enokimoto’s seat placement in that the seat placement is required for an independent claim but the Examiner then essentially disclaims the whole of the seat placement in order to meet a dependent claim. Appeal Br. 55–56. Appellant notes that “the Office Action of June 5, 2015, on page 14 states, ‘Enokimoto is relied upon to teach that it is well known to place the seating elements in a vehicle such that a lower point of the seating surface is lower than a top of the engine,’” and contends that “[i]f the battery of claim 49 Appeal 2018-000857 Application 14/478,689 23 isn’t being placed beneath the frame, then it is above the frame (yet still beneath the seat, to meet the claim limitation).” Id. at 56. Appellant contends that “[t]his would require raising the seat by some amount.” Id. Initially, we note that Appellant references the Office Action of June 5, 2015, but the subject of this appeal is the Non-Final Action dated September 13, 2016. With respect to the seat position recited in claim 43, the Examiner finds that “it is common in the vehicular art to initially provide a battery on a vehicle for the well known purpose of operating electrical appliances on the vehicle,” and reasons that “[i]t would have been obvious . . . to provide the vehicle taught by Hickey as modified by Enokimoto with a battery under at least one of the seat bottoms as taught by Bataille.” Non- Final Act. 10. In the Answer, the Examiner explains that “initially, Enokimoto is relied upon to teach a characteristic of seat location (e.g., forward of the engine),” which is recited in claim 43. Ans. 29. The Examiner further explains that “Bataille is relied upon to teach the provision of a battery under a seat.” Id. As the Examiner explains, however, nothing in the proposed combination requires the battery “being of such a height as to render a[] seat placed above it as somehow resultantly vertically displaced such that a lower point of the seating surface would no longer be lower than a top of an engine.” Ans. 29–30. The Examiner further explains that Appellant’s argument “is at best speculative and is not accompanied by a showing of facts [that] have been made of record and identified as being such.” Ans. 30. Appellant does not respond to the Examiner’s further explanation in its Reply Brief. We are not apprised of any inconsistency, as alleged by Appellant. Appeal 2018-000857 Application 14/478,689 24 Hickey/Enokimoto/Vittone – Claims 50 and 51 Appellant relies on the arguments presented with respect to claims 41 and 42 for the patentability of claims 50 and 51. Appeal Br. 56–57. Those arguments are unpersuasive for the reasons set forth above. Hickey/Enokimoto/Furuhashi – Claims 22, 27, 28, 30, 31, 33, 34, and 36 In response to the rejection of claims 22, 27, 28, 30, 31, 33, 34, and 36 over Hickey, Enokimoto, and Furuhashi “Applicant first notes that ‘old’ prior art is less probative of obviousness.” Appeal Br. 57–58 (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013)). Appellant explains that “Hickey was filed more than thirty years before the priority of the present application” and “Enokimoto was filed more than sixteen years before the priority of the present application (and CVT’s existed before then).” Id. at 57. Appellant contends that “[t]he fact that no one ever thought to combine them is additional evidence that one of ordinary skill would not consider teachings of a CVT powertrain design to be obvious to include in a high-power military vehicle” and “[i]t is also strong evidence that Polaris’ invention, which did not occur until over 15 years later, was not obvious.” Id. Appellant’s reliance on Leo Pharm. is misguided. “The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977); see also Iron Grip, 392 F.3d at 1325. This was not changed by Leo Pharm. See Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1337–38 (Fed. Cir. 2016). Appellant’s general allegations regarding the age of the cited references, without more, is unpersuasive of error. Appeal 2018-000857 Application 14/478,689 25 Appellant additionally reasserts arguments presented with respect to claim 43, as well as the secondary considerations of non-obviousness discussed above, which are unpersuasive of error for the reasons set forth above. See Appeal Br. 58–59. Noting the recitation in claim 22 that “each seat bottom having a seating surface with a low point of the seating surface being below a top of the engine,” Appellant contends that “Enokimoto is a rear wheel drive vehicle . . . in contrast to Hickey which runs a front driveshaft,” and “[i]f the seating of Enokimoto was used in Hickey, the seats would need to be raised to accommodate the driveshaft.” Appeal Br. 58. Appellant contends that “if anything, [the Examiner’s proposed] combination would raise the seat height,” and “the proposed inclusion of the seating of Enokimoto . . . is at odds with the other limitations of the claim and/or with the practice of one skilled in the art.” Id. at 58–59. The Examiner acknowledges that “a practical application of such a combination would indeed require [increased] vertical height to accommodate the forward drive shaft,” but explains that “the substantial height of the engine taught by Hickey, and the substantial height margin between ‘a low point’ of the seating surface and a top of the engine as illustrated in Enokimoto allows for such an accommodation.” Ans. 33. The Examiner further explains that the proposed combination is not based on a bodily incorporation of teachings. See id. Based on the record before us, we see no persuasive reason why the proposed combination of teachings would result in the seat bottom being above the top of the engine as alleged by Appellant. Appellant additionally contends that the Examiner fails to address the limitations recited in claims 33 and 36, which depend from claim 22. Appeal 2018-000857 Application 14/478,689 26 Appeal Br. 59–60. Claim 33 recites that “the front wheels are spaced-apart from the rear wheels by a wheelbase distance, the seat bottoms are supported above the frame by a seat height distance, and the all-terrain vehicle defines a ratio of the wheelbase distance to the seat height distance of at least 6.0 to 1.” The Examiner responds with respect to claim 33, noting that the previous Office Action treated this limitation and identified this limitation as being present in Enokimoto (see Enokimoto, figure 1; this limitation having been explicitly mentioned by the examiner in the Office Action of Sept. 13, 2016, the examiner further providing a rationale as regards this claim of ‘providing as low as possible of a center of gravity to the vehicle.’ Ans. 35. The Non-Final Action does not reference the limitations recited in claim 33 under the heading associated with that claim. See Non-Final Act. 11–12. The Non-Final Action does, however, provide such a discussion under the heading associated with rejection of claims 43 and 48 over Hickey and Enokimoto. Id. at 8–9. We view the Answer as remedying this error. Appellant does not address this finding or rationale in its Reply Brief. Claim 36 depends from claim 34, which depends from claim 22. Claim 34 recites that the “modular engine assembly is comprised of the engine, the transmission, and at least a portion of the rear axle assembly,” and claim 36 adds that “the portion of the rear axle assembly is a differential.” The Examiner responds to Appellant’s contention regarding claim 36, noting that the previous Office Action identified this limitation as being present in the reference to Hickey (Hickey’s element 36. See Hickey, col. 2, line 33; also see the Sept. 13, 2016 Office Action interpretation of the reference to Hickey as presented on page 7 of that action, note that for the elimination of redundant material in the office action, the description of the Hickey and Enokimoto Appeal 2018-000857 Application 14/478,689 27 references are not reiterated in the later rejection of claim 36 which is presented on page 11 of the Office Action. Ans. 35–36. Again, the Non-Final Action does not reference the limitations recited in claim 36 under the heading associated with that claim. See Non- Final Act. 11–12. Similar to claim 33, the Non-Final Action does, however, provide such a discussion under the heading associated with rejection of claims 43 and 48 over Hickey and Enokimoto. Id. at 7. We view the Answer as remedying this error. Appellant does not address this finding or rationale in its Reply Brief. Appellant does not provide separate argument for claims 27, 28, 30, 31, and 34. For the reasons set forth above, we are not apprised of error in the rejection of claims 22, 27, 28, 30, 31, 33, 34, and 36. Hickey/Enokimoto/Furuhashi/Nash – Claims 23 and 24 Claims 23 and 24 depend from claim 22. Appellant does not provide separate argument for claims 23 and 24.6 Accordingly, we are not apprised of error in the rejection of claims 23 and 24. 6 It appears that, perhaps, Appellant intended the discussion on page 60 of the Appeal Brief to apply to this rejection. Nevertheless, that discussion simply expressly indicates that no separate argument is made for these claims. Appeal 2018-000857 Application 14/478,689 28 Hickey/Enokimoto/Furuhashi/ Hill – Claim 25 Claims 25 depends from claim 22. Appellant does not provide separate argument for claim 25. Appeal Br. 60. Accordingly, we are not apprised of error in the rejection of claim 25. Hickey/Enokimoto/Furuhashi/Bataille – Claims 26 and 32 Claims 26 and 32 depend from claim 22. Appellant does not provide separate argument for claims 23 and 24. Appeal Br. 60. Accordingly, we are not apprised of error in the rejection of claims 26 and 32. Hickey/Enokimoto/Furuhashi/Hypes – Claims 35, 37, 38, and 40 Claims 35, 37, 38, and 40 depend from claim 22. Appellant does not provide separate argument for, or even address, claims 35, 37, 38, and 40. Accordingly, we are not apprised of error in the rejection of claims 35, 37, 38, and 40. Hickey/Enokimoto/Furuhashi/ Vittone – Claims 41 and 42 Claims 41 and 42 depend from claim 22. Appellant does not provide separate argument for, or even address, claims 41 and 42. Accordingly, we are not apprised of error in the rejection of claims 41 and 42. DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22, 23, 27, 28, 30, 31, 34–38, 43– 48, 52, 53 103 Hypes, Furuhashi 22, 23, 27, 28, 30, 31, 34–38, 43– 48, 52, 53 23, 24 103 Hypes, Furuhashi, Nash 23, 24 Appeal 2018-000857 Application 14/478,689 29 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26, 32 103 Hypes, Furuhashi, Bataille 26, 32 41, 42 103 Hypes, Furuhashi, Vittone 41, 42 43, 48 103 Hickey, Enokimoto 43, 48 44–47 103 Hickey, Enokimoto, Bataille 44–47 49 103 Hickey, Enokimoto, Bataille 49 50, 51 103 Hickey, Enokimoto, Vittone 50, 51 22, 27, 28, 30, 31, 33, 34, and 36 103 Hickey, Enokimoto, Furuhashi 22, 27, 28, 30, 31, 33, 34, and 36 23, 24 103 Hickey, Enokimoto, Furuhashi, Nash 23, 24 25 103 Hickey, Enokimoto, Furhashi, Hill 25 26, 32 103 Hickey, Enokimoto, Furuhashi, Bataille 26, 32 35, 37, 38, 40 103 Hickey, Enokimoto, Furuhashi, Hypes 35, 37, 38, 40 41, 42 103 Hickey, Enokimoto, Furuhashi, Vittone 41, 42 Overall Outcome: 22–28, 20– 38, 40–53 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2018-000857 Application 14/478,689 30 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection7, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) 7 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” Copy with citationCopy as parenthetical citation