Ex Parte Brendel et alDownload PDFBoard of Patent Appeals and InterferencesAug 1, 201111227208 (B.P.A.I. Aug. 1, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte THOMAS BRENDEL and ANDREAS BIEDERSTAEDT ____________________ Appeal 2009-012196 Application 11/227,208 Technology Center 3600 ____________________ Before JOHN C. KERINS, KEN B. BARRETT, and MICHAEL C. ASTORINO, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012196 Application 11/227,208 2 STATEMENT OF THE CASE Thomas Brendel and Andreas Biederstaedt (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-19. An oral hearing was held on July 13, 2011. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A vehicle having a chassis and a driver’s seat which can be set thereon in an inclination with respect to the chassis along two curved rails, comprising: an inclination sensor which determines an angular position (α) of a surface of the driver’s seat with respect to the horizontal; an adjusting device which is connected to the chassis and the driver’s seat; and a control and regulating device which is operatively connected to the inclination sensor and the adjusting device and via which the driver’s seat can be pivoted by the adjusting device in such a manner that the seat surface is situated essentially parallel to the horizontal (H), wherein two guide rails are fastened to the driver’s seat and are mounted in each case between at least two rollers connected in a positionally fixed manner to the chassis. Appeal 2009-012196 Application 11/227,208 3 THE REJECTIONS The following Examiner’s rejections are before us for review: 1. Claims 1, 3, 4, 7-11, 18 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Torres1 (EP 0 829 247 A2, published Mar. 18, 1998) and Möller (US 4,941,709, issued Jul. 17, 1990); 2. Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Torres, Möller, and Serber (US 5,244,252, issued Sep. 14, 1993); 3. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Torres, Möller, and Ferro (US 4,101,168, issued Jul. 18, 1978); and 4. Claims 12-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Torres, Pipon (US 4,842,232, issued Jun. 27, 1989), and Möller. OPINION We have carefully reviewed the rejections on appeal in light of the arguments of Appellants and the Examiner. As a result of this review we have determined that the Examiner’s conclusion that it would have been obvious to modify the wheelchair of Torres to have rails as taught by Möller or curved slide members as taught by Pipon is not based on a rational underpinning, but speculation. See App. Br. 6 (Appellants arguing that “there is no reason to use the rail guide system of MOLLER in TORRES . . . 1 In the Answer, the Examiner identifies Torres as both the European Patent Application and as US 6,068,280, issued May 30, 2000. Ans. 3. We, like Appellants, refer to the European Patent Application as that is the reference specifically identified in the appealed office action. See Final Rej. dated Oct. 1, 2008, at 4. Appeal 2009-012196 Application 11/227,208 4 .”); id. at 23 (“In accordance with KSR Int’l, Appellant submits that there clearly is no reason to combine TORRES, PIPON and MOLLER together.”). Without an articulated rationale based on rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). We first turn to rejection of claims 1, 3, 4, 7-11, 18 and 19 as obvious in light of Torres and Möller. The Examiner found that Torres substantially discloses the vehicle as recited in the rejected claims with the exception of the two curved guide rails mounted between rollers. Ans. 3-4. Torres’s wheelchair has a self-leveling and selectively adjustable seat mounted to the base via a universal joint 50 and utilizes two actuators 52, 54 to alter the seat position as needed. This configuration allows seat adjustment about two axes. Torres, col. 3, ll. 4-6; col. 5, ll. 1-18; figs. 1, 2. The Examiner further found that Möller discloses a tiltable chair utilizing two curved rails fixed between four rollers. Ans. 4. The Examiner proposes the “modification of the wheelchair of Torres by combining arcuate rails with the adjusting device [of Torres]” and reasons: “[t]he suggestion/motivation for doing so would have been to provide a reliable and stable wheelchair tilting system, as is desired in this vehicle invention.” Ans. 4. However, the Examiner does not find that the Appeal 2009-012196 Application 11/227,208 5 unmodified Torres vehicle was unreliable or unstable, or that the proposed modification would improve those characteristics. Additionally, the Examiner appears to characterize the modification as retaining the adjustment around a second axis. Ans. 8-9. We cannot agree with the Examiner’s position that this is merely a simple substitution of one “adjusting device for another adjusting device [that] is easily performed by one having ordinary skill in the art at the time of the invention.” Ans. 8. The Examiner does not adequately describe how rails would be added to Torres’s vehicle in substitution for the “adjusting device” of Torres while still allowing the modified device to retain the ability to adjust about two axes, and does not establish that any such modification would be “simple.” In light of the above, we cannot sustain the obviousness rejection based on Torres as modified by Möller. The rejections of claims 2, 5, and 6 are based on this same modification of Torres. Ans. 4-6. As such, we also cannot sustain the rejection of claims 2 and 6 as unpatentable over Torres, Möller, and Serber or the rejection of claim 5 as unpatentable over Torres, Möller, and Ferro. Lastly, we turn to the rejection of claims 12-17 as unpatentable over Torres, Pipon, and Möller. Although the Examiner’s states this as a single ground of rejection, the articulation describes two separate modifications. Ans. 6-7. First, the Examiner apparently proposes to modify Torres’s wheelchair to employ Pipon’s holders. Id. at 6. Second, the Examiner proposes to modify Torres’s wheelchair to employ the arcuate rails of Möller. Id. at 7. For both combinations, the Examiner’s reasoning again is that: “[t]he suggestion/motivation for doing so would have been to provide a reliable and stable wheelchair tilting system, as is desired in this vehicle Appeal 2009-012196 Application 11/227,208 6 invention.” Id. at 6, 7. For the reasons discussed above, this rationale is inadequate to support the substitution of the arcuate rails of Möller for the adjusting device of Torres’ wheelchair. Moreover, the addition of Pipon’s holders to the combined teachings of Torres and Möller does not remedy the deficiencies of the Examiner’s rationale for substituting the arcuate rails of Möller for the adjusting device of Torres’ wheelchair. Thus, the Examiner’s evidence and technical reasoning is inadequate to support the conclusion of obviousness. DECISION The decision of the Examiner to reject claims 1-19 is reversed. REVERSED nlk Copy with citationCopy as parenthetical citation