Ex Parte Carbonero

Board of Patent Appeals and Interferences

Dec 22, 2006

10392209 (B.P.A.I. Dec. 22, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KURT K. CARBONERO
____________

Appeal No. 2006-1085
Application No. 10/392,209
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent
Judges.

FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of
claims 1, 3 and 4, the only claims remaining in the application. Claim 2 has
been cancelled.

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Application No. 10/392,209

As noted on page 1 of the specification, appellant’s invention, entitled
“GYM SCOOTER,” relates to a scooter used for recreational purposes. In
particular, appellant notes that propelling a scooter across the floor while in
a seated position on the scooter helps to build upper and lower body
strength, and improve coordination. The essence of appellant’s invention
resides in a low profile connection that is integrally formed as part of the
scooter body and that is utilized to connect two or more scooters together in
abutting relation so a single person may move across the floor in a prone or
supine position on the scooters, or several persons can move together across
the floor with each person being seated on one of the interconnected
scooters. Each of claims 1, 3 and 4 is independent and generally
representative of the subject matter on appeal, a copy of those claims can be
found in the Appendix attached to appellant’s brief.

The prior art references relied upon by the examiner in rejecting the
appealed claims are:
John et al. (John) 5,860,369 Jan. 19, 1999

Karashima 6,095,348 Aug. 1, 2000

Claims 1, 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karashima in view of John.

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Rather than attempt to reiterate the examiner's commentary with
regard to the above-noted rejection and the conflicting viewpoints advanced
by appellant and the examiner regarding the rejection, we make reference to
the answer (mailed May 17, 2005) for the examiner's reasoning in support of
the rejection, and to appellant’s revised brief (filed February 23, 2005) and
reply brief (filed June 14, 2005) for the arguments thereagainst.

OPINION

In reaching our decision in this appeal, we have given careful
consideration to appellant’s specification and claims, to the applied prior art
references, and to the respective positions articulated by appellant and the
examiner. As a consequence of our review, we have made the determination
that the examiner’s obviousness rejection will not be sustained. Our reasons
follow.

In rejecting claims 1, 3 and 4 under 35 U.S.C. § 103(a), the examiner
has determined that Karashima discloses a wheeled cart or scooter (1)
generally like that claimed by appellant, except that it does not disclose a
connection feature of the particular type set forth in the claims on appeal for
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joining one scooter to another in a close mating relationship so that at least
one person can ride two or more scooters at the same time. To address this
deficiency in Karashima, the examiner turns to John, urging that this patent
discloses a pallet device or platform (10) comprising modular sections (12-
15), each of which sections has a vertical side surface (50) with a horizontal
flange (18) extending from the bottom edge of the vertical surface, and a
vertical flange (52’) extending upwardly from the horizontal flange so as to
define a groove adapted to receive a tongue (52) of a second platform
section, as shown in Figures 4 and 4A. From the examiner’s perspective, it
would have been obvious to one of ordinary skill in the art at the time of
appellant’s invention to provide the carts or scooters of Karashima with
flange connections like those of John, as a replacement for those already
present on Karashima, “to prevent the scooters from disconnecting in either
the upward or downward directions” (answer, page 3).

Appellant contends (brief, pages 5-14) that Karashima and John are
non-analogous art to the art of the present invention, that the examiner has
failed to state or identify any motivation or suggestion to combine the
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applied patents, and that in any event John teaches away from the
examiner’s proposed combination.

Considering the question of non-analogous prior art for resolution of
obviousness under 35 U.S.C. § 103, the law presumes full knowledge by the
hypothetical worker having ordinary skill in the art of all the prior art in the
inventor's field of endeavor. With regard to prior art outside the inventor's
field of endeavor, knowledge is presumed only as to those arts reasonably
pertinent to the particular problem with which the inventor was involved.
See In re Clay, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992); In re
Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); and, In re Antle,
444 F.2d 1168, 170 USPQ 285 (CCPA 1971). Thus, the determination that
a reference is from a non-analogous art is twofold. First, it must be decided
if the reference is from within the inventor's field of endeavor. If it is not,
then it must be determined whether the reference is reasonably pertinent to
the particular problem with which the inventor was concerned.

In the present case, we find that Karashima is generally within
appellant’s field of endeavor, i.e., a wheeled cart or platform (scooter) for
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supporting and transporting a load, whether such load is in the form of a
human being or other items, and wherein the wheeled cart or scooter is
capable of use for recreational and physical education purposes, i.e., would
permit a single person to move across the floor while seated on a single
cart/scooter, or to move across the floor in a prone or supine position while
laying on a plurality of such carts/scooters that are interconnected in an
abutting relationship. As for the John patent, we do not see the interlocking
modular pallet therein as being within appellant’s field of endeavor, but we
do consider this reference to be reasonably pertinent to the particular
problem with which the inventor was concerned.

As was noted on page 1 of the specification, the particular problem
addressed by appellant was the need to replace the connecting rod
arrangement for gym scooters known in the prior art with an arrangement
that would allow interconnection of one or more scooters together in a close
abutting relationship, while avoiding the need for a separate connection
element that may become lost or be easily damaged. John provides a
teaching of a connection arrangement (e.g., Figs. 3, 4, 4A, 5 and 6) for
permitting modular sections of a load carrying pallet to be easily joined
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together in a close abutting relationship. More particularly, John discloses a
pallet device or platform (10) comprising modular sections (12-15), each of
which has a vertical side surface (50, 56) with a horizontal flange extending
from the bottom edge of the vertical surface, and a vertical flange extending
upwardly from the horizontal flange so as to define an upwardly open
groove adapted to receive a downwardly extending tongue (52) of a second
platform section. When joined together in the manner seen in Figures 4A
and 5, the pallet sections (e.g., 12, 13) would resist separation due to
vertically oriented upward or downward forces on the pallet sections and
horizontal forces directed perpendicular to the line of joinder between the
pallet sections. This low profile form of connection between the pallet
sections of John allowing the sections to be connected in a close abutting
relationship, in our opinion, would be reasonably pertinent to the particular
connection problem with which the inventor was concerned.

Thus, we conclude that both Karashima and John are analogous prior
art and were properly considered by the examiner in the obviousness
rejection before us on appeal. As a further point, we note that it is well
settled that in cases involving relatively simple every-day mechanical
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concepts, like those involved in the present application, it is reasonable to
permit inquiry into other areas where one of even limited technical skill
would have been aware that similar problems exist. See In re Heldt,
433 F.2d 808, 812, 167 USPQ 676, 679 (CCPA 1970).

As for appellants’ assertion (brief, page 7) that the examiner “did not
identify any motivation or suggestion to combined the cited references,” we
direct attention to page 3 of the answer, wherein the examiner has urged that
it would have been obvious to one of ordinary skill in the art at the time of
appellant’s invention to provide the carts or scooters of Karashima with
flanged connections like those of John “to prevent the scooters from
disconnecting in either the upward or downward directions.” However, the
real issue on appeal is whether the stated rationale of the examiner would
have been adequate to teach or suggest to one of ordinary skill in the art at
the time of appellant’s invention the combination of Karashima and John
urged by the examiner so as to render the subject matter on appeal obvious
within the meaning of 35 U.S.C. § 103. In this case, we agree with appellant
that, absent the hindsight benefit of appellant’s own disclosure and claims,
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the combined teachings to be reasonably drawn from the applied patents
would not have led an artisan to the combination urged by the examiner.

As appellant has noted on page 8 of the brief, the mere fact that the
prior art may be modified in the manner suggested by the examiner does not
make the modification obvious unless the prior art suggested the desirability
of the modification. Here, we find no suggestion in either Karashima or
John, whether considered individually or collectively, of the desirability of
the modification urged by the examiner. As indicated on page 9 of the brief,
Karashima discloses a supermarket goods display cart that can be quickly
and easily connected and disconnected from other movable display carts by
a simple vertical movement of one cart relative to another, without the use of
any additional parts. Note particularly, Figures 1-3, 6(a) and 6(b) of
Karashima. As also noted by appellant, there is no indication or reason to
conclude that the particular connecting feature shown in Karashima is in any
way deficient. By comparison, John discloses an interlocking modular pallet
apparatus wherein a plurality of modular platform sections (12-15) are
initially joined together by interconnecting flanges (52, 54), and then
ultimately drawn together and secured in a final position by a metal locking
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ring (46) placed over a central conical structure (44) defined by quarter-
section central corner portions of each of the modular sections. Note
particularly, Figures 2, 3, 7 and 8 of John. In the final analysis, we agree
with appellant that there is simply no reason to use the more complex, semi-
permanent connection arrangement of the sectional pallet in John in place of
the relatively simple connection arrangement present on the supermarket
goods carts of Karashima.

As an additional point, we note that independent claim 3 defines a
connection arrangement wherein the vertical side surface of the scooter
platform itself has a notch (e.g., 38) that is adapted to receive a mating
tongue on a second scooter for joining the scooters together in a close
mating relationship with abutting vertical side surfaces. We find nothing in
either Karashima or John that teaches or suggests such an arrangement. The
examiner’s position (answer, page 5) that the notch of appellant’s claim 3 is
readable on the space between the flanges (52’) of John, is not well founded,
since such space is not a notch in and defined by the vertical side surface of
a scooter platform as required by the claim.

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For the above reasons, we will not sustain the examiner’s rejection of
claims 1, 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable over
Karashima and John.

Since the § 103 rejection before us on appeal has not been sustained, it
follows that the decision of the examiner is reversed.

REVERSED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

CEF/jrg
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REISING, ETHINGTON, BARNES, KISSELLE, P.C.
P. O. Box 4390
Troy, MI 48099-4390
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