Richard Larry. Sunsdahl et al.

Patent Trials and Appeals Board

Jun 2, 2020

14478700 - (D) (P.T.A.B. Jun. 2, 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.
14/478,700 09/05/2014 Richard Larry SUNSDAHL PLR-15-1688.02P-02-US-e 1010
93175 7590 06/02/2020
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
06/02/2020 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, GEOFFREY G. WHITE, and
BRIAN MICHAEL SAFRANSKI
Appeal 2018-003407
Application 14/478,700
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 22–26 and 28–46.
Final Act. 1. The Examiner withdrew the rejection of claims 47–51.

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.
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Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b).
AFFIRM; 37 C.F.R. § 41.50(b).
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. ¶ 1. Claim 22,
reproduced below, is illustrative of the claimed subject matter:
22. An all-terrain vehicle, comprising:
a frame;
a front suspension comprising at least one right front
control arm and at least one left front control arm, the control
arms being coupled to the frame, and a front torsion bar coupled
between the front control arms;
at least two front wheels coupled to the front suspension;
a rear suspension comprising at least one right rear control
arm and at least one left rear control arm, the control arms being
coupled to the frame, and a rear torsion bar coupled between the
rear control arms;
at least two rear wheels coupled to the rear suspension;
a seating area supported by the frame, comprising side by
side seats each having a seat back and a seat bottom;
an engine supported by the frame, the engine positioned
rearward of the seating area, and each seat bottom has a seating
surface with a low point of the seating surface being lower than
a top of the engine;
a transmission comprising a continuously variable
transmission;
a front axle assembly supported by the frame and drivingly
coupling the transmission to the front wheels;
a rear axle assembly supported by the frame and drivingly
coupling the transmission to the rear wheels; and
outermost points of the vehicle in a width-wise direction
define a width of less than 54 inches.

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REFERENCES
The prior art relied upon by the Examiner is:
Vittone
Hickey
Enokimoto
Furuhashi
US 3,366,411
US 3,709,314
US 5,251,713
US 5,327,989
Jan. 30, 1968
Jan. 9, 1973
Oct. 12, 1993
July 12, 1994
Hypes
Bataille
US 2005/0173180 A1
US 2006/0180383 A1
Aug. 11, 2005
Aug. 17, 2006
REJECTIONS
Claims 22–26, 29, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hickey and Enokimoto. Final Act. 3.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Bataille. Final Act. 5.
Claims 30, 31, and 33–35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hickey, Enokimoto, and Hypes. Id.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Vittone. Final Act. 6.
Claims 37–41 and 45 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, and Furuhashi. Id.
Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Vittone. Final Act. 8.
Claims 44 and 46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickey, Enokimoto, Furuhashi, and Bataille. Final Act. 9.
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OPINION
Obviousness
Hickey/Enokimoto – Claims 22–26, 29, and 32
Appellant argues these claims as a group.2 We select claim 22 as
representative. Claims 23–26, 29, and 32 stand or fall with claim 22. See 37
C.F.R. § 41.37(c)(iv). The Examiner finds that Hickey teaches the majority
of features recited in claim 22, but fails to teach that “the vehicle width is
less than 54 inches, or is approximately 50 inches.” See 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 4. 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. 5.
The Examiner also acknowledges that Hickey fails to teach a
continuously variable transmission (CVT) and side-by-side seats with
bottoms having a low point that is lower than the top of the engine. Final
Act. 4. The Examiner finds that use of a CVT amounted to a simple
substitution and that Enokimoto teaches the claimed seating arrangement.
The Examiner reasoned that Enokimoto’s seat configuration would have
been obvious “for providing as low as possible of a center of gravity to the
vehicle.” Id.

2 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 22–26, 37, 45, 47),” (Appeal Br. 22),
which does not constitute separate argument. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).
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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. 21; see also Reply Br. 2 (“the Examiner still provides
no 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 Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“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.
Final Act. 4. 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. See Ans.
5.
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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. 22. It is
impermissible hindsight to imbue the person of ordinary skill in the art with
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. 3–4. 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
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than to assert that they were the first to put all of the claimed features into a
narrow ATV.
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. 21. 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 Hickey 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. 22.
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
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matter of invention”), Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed.
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. 23.
Dr. Moskwa testifies that vehicle design is not a matter of routine and
common substitution; rather, modification to one component has a cascade
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effect on the rest of the system. 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. 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. 11; see also Reply Br. 2
(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 use of a CVT, “Applicant first notes that ‘old’ prior art
is less probative of obviousness.” Appeal Br. 39 (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.
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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 Barbell Co. v. USA Sports, Inc, 392 F.3d 1317, 1325 (Fed.
Cir. 2004). 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.
Appellant additionally disputes the Examiner’s rejection as it relates
to claim 22’s recitation that “the transmission compris[es] a continuously
variable transmission.” Appeal Br. 39–44. 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
44. 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 40–41.
The Examiner explains that
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[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.
Final Act. 4. 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.
20. Rather, “Hickey . . . describes the engine as ‘an internal combustion
engine 12’” and the engine’s “operating specification is not disclosed in the
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 22 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 also argues at length that the
commercial embodiment of Hickey, the XR-311, has an engine that would
be incompatible with an ATV engine. Appeal Br. 40–44. Again, the
Examiner’s basis for the rejection is Hickey, which is not specific regarding
the details of the engine other than it being an internal combustion engine.
Furthermore, though not specifically stated by the Examiner, given that
Enokimoto teaches an ATV also with an unspecified engine and that the
claims at issue are to an ATV, we find that use of an appropriately sized
engine for an ATV, i.e., not a high-power, low-torque engine as asserted by
Appellant to be found in Hickey via the XR-311 would have been obvious,
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thus rendering moot Appellant’s arguments relating to compatibility with a
CVT.
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
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 (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
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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) (citation omitted). “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. That is, the evidence of secondary considerations
cannot be due to what is already known in the art.
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. 24; see also id. at 26 (“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
77.3 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 the use of a CVT. That is, the only purportedly
novel features of claim 22 are the particular vehicle width and use of a CVT.

3 That decision is final and has not been appealed by the Patent Owner.
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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 26.
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 use of a CVT are
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. 24; 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. 7 (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.
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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. 25; Jarosz ¶ 62. Handling and a low center of gravity
are not claimed features. Although claim 22 recites a width of 54 inches, the
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. 24; 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.
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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
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.
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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
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 22–26, 29, and 32. 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.
Hickey/Enokimoto/Bataille – Claim 28, 44, and 46
Claim 28 ultimately depends from claim 22 and claims 44 and 46
ultimately depend from claim 37, which further recite that “a battery [is]
positioned underneath one of the seat bottoms.” The Examiner finds that
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Bataille teaches this additional feature and proposes further modifying the
teachings of Hickey accordingly. Final Act. 5. 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. The Examiner
counters, however, that Bataille is used for the battery location and that:
The vertical height of the battery taught by Bataille is in no way
specifically described by Bataille as 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. 25. Appellant does not address the more specific rationale provided in
the Answer. Accordingly, we sustain the Examiner’s rejection of claims 28,
44, and 46.
Hickey/Enokimoto/Hypes – Claims 30, 31, and 33–35
These claims ultimately depend from claim 22 and claim 30 recites
that “the modular engine assembly is mounted to the frame by at least first
and second mounting assemblies, where the first mounting assembly is
coupled to the rear axle assembly.” The Examiner finds that Hypes teaches
the features recited in claim 30 and proposes further modifying the teachings
of Hickey accordingly. Final Act. 5–6. Appellant disputes the Examiner’s
finding related to Hypes, but does not allege any particular error in the
rationale provided. Appeal Br. 45–46.
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. 46. 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
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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.” Ans. 26. The Examiner
relies on “Hypes . . . to teach the first, second and third mounting assemblies
as specified in claims 30, 31, and 33–35.” 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 25),
and explains that “the structure taught by Hypes [being] capable of being
mounted as a unit . . . speaks favorably to the conceptual compatibility of the
reference in the combination” (id. at 26).
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 Hickey.
Appellant does not argue claims 31 and 33–35 separately. As such, we are
not persuaded of error in the Examiner’s rejection of claims 30, 31, and 33–
35.
Hickey/Enokimoto/Vittone – Claim 36
Appellant relies on the arguments presented with respect to claim 22
for the patentability of claim 36. Appeal Br. 46. Those arguments are
unpersuasive for the reasons set forth above.
Hickey/Enokimoto/Furuhashi – Claims 37–43 and 45
Appellant makes no separate argument for dependent claims 42 and
43 apart from that made in regard to claim 37. These claims therefore stand
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or fall with claim 37. As to the rejection of claims 37–41 and 45 over
Hickey, Enokimoto, and Furuhashi, 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. Final Act. 7. Appellant
urges that such a position would raise the seat, and it is a generic motivation
that supports placing a fuel tank anywhere. Appeal Br. 47. We agree with
the Examiner, however, 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.”). Accordingly, we are not persuaded of
error in the Examiner’s rejection.

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DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)  Affirmed Reversed New
Ground
22–26, 29,
32
103 Hickey, Enokimoto 22–26,
29, 32

28 103 Hickey, Enokimoto,
Bataille
28
30, 31, 33–
35
103 Hickey, Enokimoto,
Hypes
30, 31,
33–35

36 103 Hickey, Enokimoto,
Vittone
36
37–41, 45 103 Hickey, Enokimoto,
Furuhashi
37–41, 45
42, 43 103 Hickey, Enokimoto,
Furuhashi, Vittone
42, 43
44, 46 103 Hickey, Enokimoto,
Furuhashi, Bataille
44, 46
Overall
Outcome:

22–26,
28–46
22–26,
28–46
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2012). 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
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. . . .
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(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
rejection,4 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)

4 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.”