Ex Parte Smith et al

Patent Trial and Appeal Board

Jul 18, 2013

11771376 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRENDON SMITH, ANDREW HOLTAN,
CHRISTOPHER J. BUTKIEWICZ, and FRANCIS GIUNTA
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Appeal 2011-005050
Application 11/771,376
Technology Center 3600
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Before JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brendon Smith et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-3, 5-26, 28, and 29 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Iizuka (JP 2002-362457 A,
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published Dec. 18, 2002) and Galbraith (US 2003/0010555 A1, published
Jan. 16, 2003).1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Claimed Subject Matter
Claims 1, 16, and 22 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter.
1. A motorcycle comprising:
a steering head;
a steering assembly pivotably coupled
to the steering head;
at least one longitudinal frame
member extending rearwardly from the steering
head;
a rear frame member coupled to the
longitudinal frame member, the rear frame
member including a mounting portion having a
mounting surface, and first and second walls
extending from the mounting surface at an oblique
angle to the mounting surface; and
a support coupled to the rear frame
member, the support including a coupling portion
having a coupling surface, and first and second
walls extending from the coupling surface at an
oblique angle to the coupling surface, the first and
second walls of the mounting portion wedged
against the first and second walls of the coupling
portion, respectively, to substantially prevent
rotation of the support with respect to the rear
frame member.
App. Br., Clms. App’x. Emphasis added.

1 The Examiner withdrew the rejection of claim 27. Ans. 2 and 3.
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OPINION
Claims 1-3 and 5-15
The Examiner finds that Iizuka substantially discloses the subject
matter of independent claim 1, but “fails to show that walls as being
oblique.” Ans. 3. To cure the deficiency of Iizuka, the Examiner turns to
Galbraith for its teaching of a motorcycle’s rear fender structure and more
particularly, “a connection between fender mounting parts including a pair
of bolts 82 that connect element 50 with element 98,” and “at the coupling
area, . . . oblique walls on both portions and straddling the connecting bolts
82” to “allow the fender elements to nest and prevent relative movement as
well as slide along the slanted walls into its nested position.” Ans. 4 (citing
Galbraith, fig. 8). The Examiner concludes that it would have been obvious
to one of ordinary skill in the art “to provide Iizuka[’s] fender support and
rear frame member with cooperating oblique walls, as taught by Galbraith,
in order to align the mating surfaces.” Id.
Appellants argue that “Iizuka fails to teach or suggest that the walls
46c of the fender support 46 and the walls 46d [sic, 41d] on the rear frame
member 41 are wedged against each other in the manner of independent
claim 1.” App. Br. 11. Appellants also argue that as “shown in FIG. 8 of
Iizuka, a clearance exists between the walls 46c of the fender support 46 and
the respective walls 46d [sic, 41d] of the rear frame member 41 so [as] to not
interfere with the fitment of each of the fender support 46 and the rear frame
member 41 with the pipes 137.” Id. Appellants further argue that “the
Examiner’s proposed combination of slanting the surfaces while maintaining
a clearance therebetween fails to teach the claimed feature of wedging the
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first and second walls of the mounting portion against the first and second
walls of the coupling portion.” App. Br. 11. Emphasis added.
The Examiner responds Iizuka discloses that “the pipes 46e [sic, 137]
extend from the support forming a part of the coupling portion of the support
and they are wedged against the walls of the frame.” Ans. 5. Emphasis
added.
The present Specification discloses that “the walls 106a, 106b of each
mounting portion 94 define an included angle α of about 58 degrees, the
walls 130a, 130b of each coupling portion 98 define an included angle β of
about 50 degrees to facilitate wedging of the mounting portions 94 against
the coupling portions 98.” Spec. 8, para. [0025]; see also fig. 4a. However,
the Specification does not specifically assign or suggest a particular
definition to a claim term “wedging.” Thus, it is appropriate to consult a
general dictionary definition of the word “wedge” for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
The ordinary and customary meaning of the verb “wedge” is “1: to
fasten or tighten by driving or forcing in a wedge” and “2: to force or drive
(an object) into something where it is tightly held: SQUEEZE.”
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED,
copyright 1993, Merriam-Webster, Incorporated, accessed at
http://lionreference.chadwyck.com (last visited: June 20, 2013). Thus, a
person of ordinary skill in the art would understand that in order for Iizuka’s
first and second walls 46c of the fender support 46 and first and second
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walls 41d of the rear frame member 41 to be “wedged,” those walls would
have to be squeezed or held tightly against each other.
If Iizuka’s first and second walls 46c of the fender support 46 and first
and second walls 41d of the rear frame member 41 are modified to be
oblique as taught by Galbraith, the walls would be nested, not wedged,
squeezed, or tightly fitted against each other as required by the language of
claim 1. Indeed, as pointed out by the Examiner, Galbraith’s “oblique walls
allow the fender elements to nest . . . as well as slide along the slanted walls
into its nested position.” Ans. 4. The only findings that the Examiner makes
concerning wedging is with respect to Iizuka’s pipe 137, not Iizuka’s walls
46c, 41d. In particular, the Examiner finds that “[d]uring assembly[,] the
pipe [137] must be carefully aligned and wedged into the frame opening,”
and “the pipes 46e [sic, 137] extend from the support forming a part of the
coupling portion of the support and they are wedged against the walls of the
frame.” Ans. 5. Regardless whether Iizuka’s pipe 137 is wedged, the
Examiner makes no findings that Iizuka’s walls 46c, 41d, modified to be
oblique by the teachings of Galbraith, are wedged against each other, are
configured to be wedged against the rear frame member 41 in order to
satisfy the claim language of independent claim 1.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2, 3, and 5-15 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Iizuka and Galbraith.
Claims 22-26 and 29
Independent claim 22 is directed to a method of assembling a
motorcycle including, inter alia, the step of “wedging the first and second
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walls of the coupling portion against a portion of the rear frame member.”
App. Br., Clms. App’x. Emphasis added.
Appellants argue that “[f]or the same reasons as discussed above with
respect to the rejection of independent claim 1, neither Iizuka, Galbraith, nor
the combination thereof teaches or suggests a method of assembling a
motorcycle including . . . wedging the first and second walls of the coupling
portion against a portion of the rear frame member.” App. Br. 13. We
agree.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 22, and claims 23-26 and 29 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Iizuka and Galbraith.
Claims 16-21
Appellants argue claims 16-21 as a group and we select independent
claim 16 as the representative claim. See App. Br. 12-13; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 17-21 fall with claim 16.
Independent claim 16 is directed to a support member for a
motorcycle including, inter alia, “first and second walls extending from the
coupling surface at an oblique angle to the coupling surface, the first and
second walls configured to wedge against a portion of the rear frame
member.” App. Br., Clms. App’x. Emphasis added.
Appellants argue that “[f]or the same reasons as discussed above with
respect to the rejection of independent claim 1, neither Iizuka, Galbraith, nor
the combination thereof teaches or suggests a motorcycle support member
including . . . first and second walls extending from the coupling surface at
an oblique angle to the coupling surface for wedging against a portion of a
rear frame member.” App. Br. 12-13.
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We are not persuaded by Appellants’ argument because it is not
commensurate with the scope of claim 16. See In re Self, 671 F.2d 1344,
1349 (CCPA 1982) (It is well established that limitations not appearing in
the claims cannot be relied upon for patentability). Unlike claim 1, claim 16
only recites that “the first and second walls [of the coupling portion are]
configured to wedge against a portion of the rear frame member.” App. Br.,
Clms. App’x. The rear frame member has not been positively recited in
claim 16, but rather is only introduced in an intended use phrase (i.e., “for a
motorcycle having a rear frame member”) in the preamble. Thus, the
Examiner’s modification of Iizuka’s first and second walls 41d of the
coupling portion 41 to be oblique by the teaching of Galbraith renders the
walls 41d to be configured to wedge.
Appellants also argue that “one of ordinary skill in the art . . . would
not have modified Iizuka’s fender support 46 and rear frame member 41 in
the manner proposed by the Examiner because such modification would be
redundant.” App. Br. 10. In order words, Appellants argue that because
Iizuka uses the pipes 137 to provide alignment and a tight fitment between
the fender support 46 and the rear frame member, modifying the walls 46c
and 41d to be oblique “would not enhance the functionality that is already
provided by the fitment between the pipes 137 with the fender support 46
and the rear frame member 41. Id.
The Examiner responds that during assembly, the “alignment process
would be facilitated by slanting the sides, as is well known in the art and
taught by Galbraith” and this “would add the additional alignment
functionality.” Ans. 5. We agree with the Examiner that oblique walls
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would act as a guide and aid in alignment during assembly. Therefore,
Appellants’ redundancy argument is unpersuasive.
Finally, Appellants argue that:
Iizuka’s method of aligning and attaching the fender support 46
and the rear frame member 41 (i.e., using the implanted pipes
137 and bolts 138), from an assembly standpoint, requires a
clearance between the first and second walls 46c of the fender
support 46 and the respective first and second walls 4[1]d of the
rear frame member 41 so [as] to not interfere with the fitment of
each of the fender support 46 and the rear frame member 41
with the pipes 137.
App. Br. 10-11. Appellants also argue that “[c]onsequently, any contact or
wedging between the walls 46c, 4[1]d . . . is likely undesirable and would
result in problems (e.g., misalignment) with the fitment of each of the fender
support 46 and the rear frame member 41 with the pipe 137.” App. Br. 11.
We are not persuaded by Appellants’ argument. Although Figure 8 of
Iizuka appears to show a clearance between wall 46c of the fender support
(fender stay 46) and wall 41d of the rear frame member (rear arm bracket
41), there is no indication that this clearance is required to prevent
interference with the fit between the fender support (fender stay 46), the rear
arm member (rear arm bracket 41), and the positioning pipe 137 as
suggested by Appellants. Indeed, paragraph [0036] of Iizuka states that “the
convex seat 46c of the holding part 46a of the above-mentioned fender stay
is abutting 41d of each concave seat.”2 Appellants have not pointed to
anything in Iizuka that supports the argument that contact between Iizuka’s

2 Our reference to Iizuka’s paragraph [0036] is to an English machine
translation made of record in the electronic file wrapper of the underlying
application on July 8, 2013, accessed at http://www4.ipdl.inpit.go.jp (last
visited: June 17, 2013).
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walls 46c and 41d is undesirable or would result in misalignment. Thus, this
argument does not persuade us of error in the Examiner’s rejection of claim
16.
Accordingly, we sustain the Examiner’s rejection of independent
claim 16, and claims 17-21 falling therewith, under 35 U.S.C. § 103(a) as
unpatentable over Iizuka and Galbraith.
Claim 28
Claim 28 depends from claim 16 and recites that “the coupling portion
is slidable relative to the portion of the rear frame member in a direction
substantially parallel to the lengths of the first and second walls of the
coupling portion.” App. Br., Clms. App’x.
Appellant first argues that claim 28 “is believed to be allowable in
view of the combination of Iizuka and Galbraith for at least the same reasons
as claim 16.” App. Br. 13. As we did not find Appellants’ arguments with
respect to claim 16 to be persuasive for the reasons discussed supra, these
arguments are likewise unpersuasive with respect to the Examiner’s
rejection of claim 18.
Appellant also argues that “for the same reasons as discussed . . . with
respect to the rejection of dependent claim 27, Appellants respectfully
submit that the rejection of claim 28 is in error.” App. Br. 13. With respect
to claim 27, Appellants argue that “the length (i.e., long dimension) of the
walls 46c of the fender support 46 is oriented in a direction normal to the
plane of the page of FIG. 8 of Iizuka,” and “the sleeves 137 prevent any
relative movement whatsoever between the fender support 46 and the rear
frame member 41 in this direction.” App. Br. 12. Further, Appellants argue
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that the proposed modification of Iizuka by the teachings of Galbraith does
not cure this deficiency. Id.
We are not persuaded by Appellants’ argument. The rear frame
member is not positively recited in claim 28. Thus, Appellants’ argument
that there is no relative movement between Iizuka’s fender support (fender
stay 46) and rear frame member (rear arm bracket 41) is not commensurate
with the scope of claim 28. See Self, 671 F.2d at 1349.
Accordingly, we sustain the Examiner’s rejection of claim 28 under
35 U.S.C. § 103(a) as unpatentable over Iizuka and Galbraith.

DECISION
We reverse the Examiner’s decision to reject claims 1-3, 5-15, 22-26,
and 29.
We affirm the Examiner’s decision to reject claims 16-21 and 28.
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-IN-PART

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