Ex Parte Preining et al

Patent Trial and Appeal Board

Feb 28, 2017

13818701 (P.T.A.B. Feb. 28, 2017)

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.
13/818,701 02/25/2013 Daniel Preining 813179 2852
95683 7590 03/02/2017
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
BRITTMAN, FELICIA LUCILLE
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL PREINING and MATTHIAS EITSCHBERGER
Appeal 2015-005684
Application 13/818,701
Technology Center 3600
Before JENNIFER D. BAHR, FREDERICK C. LANEY, and
SEAN P. O’HANLON, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Preining and Matthias Eitschberger (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 19—
38.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—18 have been canceled. (Amendment filed Feb. 25, 2013).
Appeal 2015-005684
Application 13/818,701
INVENTION
Appellants’ invention relates to a mounting set with an adapter. Spec.
12. Claims 19 and 36 are independent. Claim 19, reproduced below, is
illustrative of the claimed invention.
19. A mounting set for mounting an electric motor to a cycle,
the mounting set including an adapter for attaching the electric
motor, the adapter including mounting holes that are spaced
from one another in accordance with an International Standard
Chainguard Mount and configured to attach the adapter to at
least one side of a bottom bracket tube using an attachment
device and bolts.
Appeal Br. 9 (Claims App.) (emphasis added).
REJECTIONS
I. The Examiner rejected claims 19-38 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor
regards as the invention.
II. The Examiner rejected claims 19-27, 29-31, 33, and 35—38
under 35 U.S.C. § 103(a) as unpatentable over Kokatsu
(EP 1 462 355 Al, pub. Sept. 29, 2004) and Reynolds
(US 2008/0032835 Al, pub. Feb. 7, 2008).
III. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Kokatsu, Reynolds, and Tsuboi
(US 6,591,929 Bl, iss. July 15, 2003).
IV. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Kokatsu, Reynolds, and Tommei
(US 6,412,800 Bl, iss. July 2, 2002).
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Application 13/818,701
V. The Examiner rejected claim 34 under 35 U.S.C. § 103(a) as
unpatentable over Kokatsu, Reynolds, and Mayer
(US 5,934,401, iss. Aug. 10, 1999).
ANALYSIS
Rejection I (Indefiniteness of Claims 19—38)
Because claim 19 (from which 20-35 depend) and claim 36 (from
which 37 and 38 depend) each recite that the adapter includes “mounting
holes that are spaced from one another in accordance with an International
Standard Chainguard Mount,” the Examiner concludes the claims are
indefinite “since those skilled in the art cannot determine with reasonable
certainty what structure is necessarily required of the claimed invention.”
Final Act. 2—3. “Specifically, ‘international standards’ change overtime and
moreover, there is no specific recitation of what exact standard is being
utilized in the claim.” Id. at 3. The Examiner finds further International
Standard Chainguard Mount, or ISCG, identifies three different standards:
ISCG MTB Standard, ISCG BMX Standard, and ISCG-05 Standard. Id.
(citing www.iscg.org). The Examiner expresses concern that “a now
existing device may suddenly later read on the claims, based on potential
changes to the standard (i.e. a prior art device could suddenly read on the
claims if a future change to the standard occurs).” Ans. 4. “In summary, the
indefmiteness issues with the claims are based on the facts that a potential
competitor has no clear way to determine whether [or] not their device reads
on the claims, since the Applicant fails to explain what specific standard is
required of the cla[i]ms, nor do they reference a set date for such a specific
standard.” Id.
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Application 13/818,701
We do not agree that the use of the ISCM standard to describe the
spacing of the adapter holes causes these claims to be indefinite. The
Examiner’s concern that standards may change over time is misplaced. This
situation is no different from a claim that recites a term whose meaning may
change over time. Even if there are changes to the definition over time, the
ordinary meaning at the time of the invention controls. SAS Institute, Inc. v.
ComplementSoft, LLC, 825 F.3d 1341, 1347 (Fed. Cir. 2016) (“Claim
construction seeks to ascribe the meaning to claim terms as a person of
ordinary skill in the art at the time of invention would have understood
them.”). In the same way, the ISCG standard referred to in the claims was in
existence when the application was filed, see www.iscg.org, and
indisputably sets forth specific dimensions defining hole positions, which
are easily understood. The fact that the ISCG standard includes the ISCG
MTB Standard, ISCG BMX Standard, and ISCG-05 Standard goes to the
breadth of its meaning, which would cover each of the hole configurations
those sub-standards disclose. Because one of ordinary skill could readily
determine the bounds of claims 19-38 based upon the ISCG standard in
effect at the time Appellants’ application was filed, we do not sustain the
rejection of claims 19—38 as indefinite.
Rejection II (Obviousness of Claims 19—27, 29—31, 33, and 35—38)
The Examiner finds “Kokatsu discloses a mounting set for mounting
an electric motor to a cycle” with structural elements independent claims 19
and 36 recite, except “Kokatsu does not teach the mounting holes are spaced
from one another using an International Standard Chainguard Mount
(ISCG).” Final Act. 4, 8, 11. “Reynolds ... is being used to teach mounting
according to the ISCG standard.” Ans. 6. Noting that Reynolds “teaches a
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Application 13/818,701
chain guide for a bicycle derailleur that uses an ISCG for mounting a back
plate (171) to a bottom bracket shell,” the Examiner concludes, “[i]t would
have been obvious to one of ordinary skill in the art, at the time of the
invention, to modify Kokatsu so that an ISCG is used to design the mounting
location enabling standard bicycle components to be used for maintenance.”
Final Act. 4. “[Designing the component to a set standard (such as the
ISCG) would in fact allow for more availability of replacement parts,
because if every bike meets the same standard design then the device could
be readily interchanged with other existing devices.” Ans. 7. The Examiner
determines further,
the combination of Kokatsu in view of Reynolds amounts to
nothing more than application of knowledge readily understood
by those having ordinary skill in the art at the time of invention
to achieve a result that would have been predictable at the time
of invention. Specifically, Kokatsu is being modified so as to
use a known mounting arrangement (that of Reynolds) for its
known purpose (to mount a bicycle component), in a manner that
achieves predictable results (i.e. a device known to be mounted
on a bicycle, that is mounted on a bicycle using a known
mounting arrangement that was known at the time of invention
to be used for mounting bicycle components).
Ans. 7—8.
Appellants contend the Examiner errs because Kokatsu fails to
disclose attaching an electric motor adapter to at least one side of a bottom
bracket tube and because the combination with Reynolds is based on an
improper use of hindsight. Appeal Br. 4—6. For the following reasons,
Appellants have not persuaded us that the Examiner erred.
Appellants argue, “the adapter of Kokatsu does not include any
mounting holes which are used to connect to any point of a bottom bracket
tube, as required by claims 19 and 36.” Id. at 4. More specifically,
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Application 13/818,701
Appellants assert, “[t]he side holes 264R, 264L of the unit mounting bracket
tube 250 of Kokatsu are present merely to allow the drive train 4 of the cycle
to extend unimpeded therethrough and are not used for any connection
purposes.” Id.at 5.
Contrary to Appellants’ assertion, however, Kokatsu teaches,
“similarly to the unit mounting bracket 70 according to the first
embodiment, the pair of side plates 254R, 254L is placed to clamp the
support section so that the drive shaft penetrates therethrough.” Kokatsu, 1
81 (emphasis added). Describing unit mounting bracket 70, Kokatsu teaches
holes 84L and 84R (which correspond to holes 264R and 264L) are formed
through a pair of side plates 72R and 72L of the adapter. Kokatsu, 64—66,
Figs. 7(a), 7(b). Holes 84L and 84R allow the drive shaft 4 to pass through
and enable side plates 72R, 72L to be clamped to support section 145 (which
corresponds to the claimed “a bottom bracket tube”) by the mounting of the
pedals 8L and 8R to the drive shaft. Id. Thus, the Examiner’s finding that
Kokatsu uses holes 264R and 264L to connect the adapter to a bottom
bracket tube is supported by a preponderance of the evidence.
Next, Appellants challenge the obviousness of having an electric
motor adapter with mounting holes that are spaced from one another in
accordance with an International Standard Chainguard Mount (ISCG), as
required by claims 19 and 36. Appeal Br. 5—6. Appellants argue the
Examiner’s reason for modifying Kokatsu “does not make sense because the
adapter of Kokatsu is itself a standardized part, and is also a single part
which does not require spare parts for maintenance, standard or otherwise.”
Id. at 5. “[I]t would appear that the plate of Reynolds could not be part of the
adapter of Kokatsu without interfering with the intended functioning,”
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Application 13/818,701
according to Appellants. Reply Br. 3. Further attacking the rational
underpinning of the Examiner’s rationale, Appellants assert,
[g]iven that Kokatsu does not disclose or suggest mounting holes
which are used to connect to any point on a bottom bracket tube,
as discussed above, Kokatsu also in no way suggests a
connection to the bottom bracket tube which can be made by
using ISCG mounting points at the bottom bracket tube or an
attachment device thereof or connected thereto, as also required
by claims 19 and 36.
Appeal Br. 5. Thus, Appellants’ objection rests on whether the Examiner
has established a valid reason with a rational underpinning (i.e., a prima
facie case) for determining that a skilled artisan would have known to
modify the electric motor adapter.
The underlying contentions supporting Appellants’ argument are
unpersuasive for the following reasons. First, for the reasons discussed
above, we do not agree Kokatsu in no way suggests a connection to the
bottom bracket tube because Kokatsu teaches clamping side plates 254R and
254L to the support section 145 (i.e., bottom bracket tube). See Kokatsu, 11
64—66, 81, Figs. 7(a), 7 (b), 17, 18. Moreover, we note that Appellants do
not explain how else the base of the Kokatsu adapter is otherwise connected
to the bicycle.
Second, regarding the assertion that the Kokatsu adapter is itself a
standardized part, we note that Appellants offer no evidentiary support (e.g.,
identifying the alleged standard or offering an affidavit). Attorney argument
cannot replace evidence and has little probative value of the asserted fact. In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). As a result, we have no basis to
give this contention any meaningful weight.
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Third, Appellants’ assertion that Kokatsu’s adapter is a single part that
does not require spare parts for maintenance is misplaced. In the context of
the Final Action and the Answer (see Final Act. 4, 8, 11; Ans. 6—8), we
understand the Examiner’s reference to “enabling standard bicycle
components to be used for maintenance” differently. We understand the
Examiner as referring to the maintenance of the Kokatsu adapter itself and
the improved interchangeability and reparability afforded to this part should
replacement be desired or necessary, which standardizing the means of
connection would enable.
Fourth, Appellants’ contention that adding the plate of Reynolds to
Kokatsu’s adapter would interfere with the intended function is
unpersuasive. Even if true, the Federal Circuit has recently reaffirmed that
“the test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference ....
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” MCMPortfolio, LLC v.
Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). As the Examiner has expressly
stated in this case, Reynolds is being used to teach that it was known to
mount a device to the bottom bracket tube using the hole configurations that
the ISCG standard establishes. See Ans. 7—8.
Lastly, it is important to note what Appellants do not contend.
Appellants have neither argued, nor provided any evidence or technical
reasoning, that a skilled artisan, at the time of the invention, would have
viewed the ISCG pattern of holes as an unsuitable structure, for any reason,
to use as a mount for an electric motor.
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The Examiner’s determination of obviousness is not deficient because
there is a rational underpinning to the rationale provided. The Examiner has
shown Kokatsu establishes that it was known to use the side plates of an
electric motor adapter to connect to the bottom support tube of a bicycle.
Moreover, the Examiner has shown that a skilled artisan recognized the
ISCG holes on the bottom support tube were a known structure for mounting
a bicycle component to the bottom support tube, and there is no evidence a
skilled artisan would have considered the utility of this mounting structure as
limited to attaching a chainguard. As such, a grounded logic exists between
the Examiner’s rationale for why a skilled artisan would be motived to take
advantage of the standardized ISCG hole placement on the bottom support
tube to improve the interchangeability and reparability of the electric motor
adapter. Doing so would be a mere substitution of one fixation means for
another fixation means in similar applications, and, thus, is nothing more
than an obvious selection between indisputably known alternatives and the
application of routine technical skills. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). We agree with the Examiner’s representation that,
“Kokatsu is being modified so as to use a known mounting arrangement
(that of Reynolds) for its known purpose (to mount a bicycle component), in
a manner that achieves predictable results (i.e. a device known to be
mounted on a bicycle, that is mounted on a bicycle using a known mounting
arrangement that was known at the time of invention to be used for
mounting bicycle components).” Ans. 7—8.
In view of the foregoing, we do not agree the Examiner failed to make
a proper case of obviousness for claims 19 and 36. Appellants have not
argued claims 20—27, 29—31, 33, 35, 37, and 38 are separately patentable,
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but that the rejection of these claims should be withdrawn because of the
alleged deficiencies with the rejection claims 19 and 36 from which they
depend. Appeal Br. 6. Therefore, because we are not persuaded that the
alleged deficiencies exist, we sustain the Examiner’s rejection of claims 19—
27,29-31,33, and 35-38.
Rejections III—V (Obviousness of Claims 28, 32, 34)
Regarding Rejections III—V, Appellants do not argue claims 28, 32,
and 34 are patentable separate and apart from claim 19 from which they
depend. Instead, Appellants argue the additional Tsuboi, Tommei, and
Mayer references fail to cure the deficiencies alleged to exist with the
rejection of claim 19. Appeal Br. 6—7. For the reasons discussed above (see
supra Rejection II), we remain unpersuaded such deficiencies exist.
Therefore, we sustain the Examiner’s rejection of claims 28, 32, and 34.
DECISION
The Examiner’s indefinite rejection of claims 19—38 is reversed.
The Examiner’s unpatentability rejections of claims 19—38 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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