GENERAL KINEMATICS CORPORATIONDownload PDFPatent Trials and Appeals BoardJun 26, 20202019006662 (P.T.A.B. Jun. 26, 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. 13/677,234 11/14/2012 Edward Charles Steffes JR. 2109-0122.01 1107 26568 7590 06/26/2020 COOK ALEX LTD SUITE 2004 200 WEST ADAMS STREET CHICAGO, IL 60606 EXAMINER GARFT, CHRISTOPHER ART UNIT PAPER NUMBER 3632 NOTIFICATION DATE DELIVERY MODE 06/26/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): backup@cookalex.com docket@cookalex.com ylugo@cookalex.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte EDWARD CHARLES STEFFES, JR. and PAUL MUSSCHOOT __________ Appeal 2019-006662 Application 13/677,234 Technology Center 3600 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the Examiner’s rejections. 1 This application was previously the subject of Appeal 2015-005517, dated February 10, 2017, wherein the Examiner’s rejections were reversed. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “General Kinematics Corporation.” Appeal Br. 2. Appeal 2019-006662 Application 13/677,234 2 CLAIMED SUBJECT MATTER The disclosed subject matter “is directed to a motor mount, and, in particular, to a reconfigurable motor mount.” Spec. ¶ 1. Apparatus claims 1 and 17 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A reconfigurable motor mount comprising: at least one connection point that has only a first configuration adapted to accept a first arrangement of fasteners and a second configuration adapted to accept a second arrangement of fasteners, the first and second arrangements of fasteners being different from each other. REFERENCES RELIED ON BY THE EXAMINER Name Reference Date Fietsch, Jr. US 449,039 Mar. 24, 1891 Langdon US 3,145,959 Aug. 25, 1964 Beith US 3,329,468 July 4, 1967 Pansky et al. (“Pansky”) US 3,857,611 Dec. 31, 1974 THE REJECTIONS ON APPEAL Claims 1–8 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langdon and Pansky. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Langdon, Pansky, and Fietsch, Jr. Claims 10–12, 15, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langdon, Pansky, and Beith. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langdon, Pansky, Beith, and Fietsch, Jr. Appeal 2019-006662 Application 13/677,234 3 ANALYSIS The rejection of claims 1–8 and 17 as unpatentable over Langdon and Pansky Appellant argues all these claims (i.e., 1–8 and 17) together.3 See Appeal Br. 3–6. We select claim 1 for review, with the remaining claims (i.e., claims 2–8 and 17) standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2018). The Examiner primarily relies on the teachings of Langdon for disclosing the recited motor mount, but acknowledges that Langdon does not disclose “that the mount is reconfigurable” or a “connection point only having a first configuration and a second configuration” as recited. Final Act. 2, 3. The Examiner relies on Pansky for such teachings (including inserts that permit such limited configurations). See Final Act. 4. The Examiner reasons that it would have been obvious “to modify [] Langdon to have the invertible inserts as disclosed by Pansky.” Final Act. 6. This is because “Pansky states that such a modification enables the device to easily accommodate different fasteners or stud arrangements.” Final Act. 6 (referencing Pansky 1:23–25) (“to provide a wheel casting that can easily be accommodated on at least the three basic categories of stud arrangements”). Appellant initially contends that “both patents are not directed to motor mounts,” but does not dispute that Langdon is. Appeal Br. 3; see also Reply Br. 2 (“Langdon is a small motor mounting arrangement”). Regarding Pansky, the Examiner explains, “the Pansky reference is reasonably pertinent to the particular problem [with which] Appellant was 3 “[A]pplicant submits that the arguments raised above apply with equal force to the rejection of claim 17.” Appeal Br. 6; see also Reply Br. 4. Appeal 2019-006662 Application 13/677,234 4 concerned.” Ans. 12 (referencing Spec. ¶ 3 discussing how the present disclosure provides a reconfigurable motor mount); see also id. at 14. The Examiner references Pansky as likewise addressing a reconfigurable mounting arrangement. See Ans. 12–13 (referencing Pansky 1:23–25). We have been instructed that ‘[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.’ In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other words, ‘familiar items may have obvious uses beyond their primary purposes.’ KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, [420], 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007). In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). Thus, the fact that Pansky may not specifically pertain to a “motor mount,” as does Langdon (see Reply Br. 2), does not preclude the Examiner’s reliance on Pansky because Pansky addresses a problem similar to that addressed by Appellant. Further, Appellant does not explain how, since Pansky clearly pertains to a wheel mount that can accommodate various bolt hole arrangements (see generally Pansky), Pansky would not have been logically commended to an inventor’s attention for consideration. We thus do not fault the Examiner’s additional reliance on Pansky in rejecting claim 1. Appellant also addresses the elongated openings in Langdon’s feet stating, “the elongated holes 21 permit placement of the bolts or screws at any distance along the length of the elongated holes 21.” Appeal Br. 4. As correct as this may be, Appellant is not addressing Pansky’s teachings of installing inserts into an elongated opening thereby blocking off all but a single, round, bolt hole. See Pansky Figs. 1–6 and related discussion. It Appeal 2019-006662 Application 13/677,234 5 would appear that Appellant is improperly arguing the art individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, and regarding Langdon, Appellant states, “there is another concern at play,” i.e., “Langdon was fabricated with vibration explicitly in mind.” Appeal Br. 4; see also Reply Br. 2–3. As a consequence, Appellant argues that Langdon “accommodates vibration . . . by limiting the number of pieces which vibrations could act on.” Appeal Br. 4; see also Reply Br. 3. From this premise, Appellant contends that a skilled person, “when concerned with vibration, would not add more items to the connection between the motor and the base.” Reply Br. 2. Hence, “[a]dding parts adds to the uncertainty of the behavior of the device in transmitting vibration, and one skilled in the art would not opt for the more uncertain outcome.” Reply Br. 3. The Examiner explains, “Langdon explicitly states that the legs (17 and 18) and interengaging portions (28 and 29) are what provide the vibration damping and makes no mention[] of how the fasteners contribute to such vibration damping.” Ans. 13. There is merit to the Examiner’s statement because Langdon clearly states, “[i]n addition, along with leg sections 17 and 18, the complementary interengaging sections 28 and 29 provide a resilient system for preventing or limiting the transmission of motor vibrations from the motor to base 11.” Langdon 3:16–20. Hence, the manner of fastening Langdon’s mount to the base is not identified or described as affecting motor vibration; instead, such vibration is dampened via legs 17 and 18, and sections 28 and 29. Accordingly, there is merit to the Examiner’s statement, “it is the Examiner’s position that the proposed Appeal 2019-006662 Application 13/677,234 6 modification would have no detrimental impact on the vibration dampening capabilities of Langdon.” Ans. 13. Appellant does not explain otherwise. Thus, we are not apprised of Examiner error by modifying Langdon with the addition of Pansky’s inserts. See Ans. 14 (“the only modification would be to form the inserts of Pansky to fit into the openings in Langdon”). Appellant also contends that the Examiner relied on “impermissible hindsight” by “using [A]pplicant’s disclosure to piece together the prior art.” Appeal Br. 5. Such contention is not persuasive in view of Pansky’s disclosure of employing inserts to accommodate different bolt patterns, which the Examiner relied upon when combining Langdon and Pansky. See Final Act. 6. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in combining Langdon and Pansky, or in concluding that this combination renders claims 1–8 and 17 obvious. We sustain the Examiner’s rejection of claims 1–8 and 17 as unpatentable in view of Langdon and Pansky. The rejection of (a) claim 9 as unpatentable over Langdon, Pansky, and Fietsch, Jr.; (b) claims 10–12, 15, and 16 as unpatentable over Langdon, Pansky, and Beith; and, (c) claims 13 and 14 as unpatentable over Langdon, Pansky, Beith, and Fietsch, Jr. Appellant does not dispute the Examiner’s additional reliance on Fietsch, Jr. or Beith in rejecting these claims, but instead relies on the arguments presented above regarding the combination of Langdon and Pansky. See Appeal Br. 6; Reply Br. 4. Because we are not persuaded by Appellant’s arguments regarding Langdon and Pansky, we sustain the rejection of (a) claim 9 as unpatentable over Langdon, Pansky, and Fietsch, Jr.; (b) claims 10–12, 15, and 16 as unpatentable over Langdon, Pansky, and Appeal 2019-006662 Application 13/677,234 7 Beith; and, (c) claims 13 and 14 as unpatentable over Langdon, Pansky, Beith, and Fietsch, Jr. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 17 103(a) Langdon, Pansky 1–8, 17 9 103(a) Langdon, Pansky, Fietsch, Jr. 9 10–12, 15, 16 103(a) Langdon, Pansky, Beith 10–12, 15, 16 13, 14 103(a) Langdon, Pansky, Beith, Fietsch, Jr. 13, 14 Overall Outcome 1–17 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation