Ex Parte Denby

Board of Patent Appeals and Interferences

Aug 4, 2006

10010361 (B.P.A.I. Aug. 4, 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for publication and is not binding precedent of the Board.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 MICHAEL L. DENBY
____________

Appeal No. 2006-1745
Application No. 10/010,361
Technology Center 3600
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Decided: August 4, 2006
____________

Before OWENS, BAHR and FETTING, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 20-38.
Claims 1, 4-9 and 12-19, the only other claims pending in this application, stand
allowed and are not part of this appeal.
We REVERSE.
Appeal No. 2006-1745 Page 2
Application No. 10/010,361

BACKGROUND
The appellant's invention relates to a quick release assembly for attaching a
removable part to a frame and, more particularly, to a quick release hub assembly
for a bicycle (present specification, p. 1). A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
The examiner relies upon the following as evidence of unpatentability:
Brown 2,720,804 Oct. 18, 1955
Denby 5,875,662 Mar. 2, 1999

The following rejection is before us for review.
Claims 20-38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Denby in view of Brown.
Rather than reiterate the conflicting viewpoints advanced by the examiner
and the appellant regarding this appeal, we make reference to the examiner's
answer (mailed November 21, 2003) for the examiner's complete reasoning in
support of the rejection and to the appellant's brief (filed September 15, 2003) for
the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellant's specification and claims, to the applied prior art, and to the
respective positions articulated by the appellant and the examiner. For the reasons
that follow, we cannot sustain the examiner’s rejection.
Appeal No. 2006-1745 Page 3
Application No. 10/010,361

Denby discloses a quick release assembly for bicycle wheels comprising a
handle 52 having a key 54, a piston 64 having a bore 88 and a cam 74 having first
and second ends held by a cap 66 for rotation in the bore 88, one of the ends of the
cam formed as a key receiving member provided with a keyhole 78 for receiving
the key 54 of the handle 52. The wall of cap 66 at the opening 68 is provided with
a groove 72 positioned about the circumference of the opening. The key 54
permits handle 52 to function not only to rotate the cam to move the piston, but to
provide a means for locking the assembly so as to prevent the likelihood of theft of
the wheel.
Denby’s quick release assembly is also provided with means to secure
handle 52 to the assembly so that it will not fall off during normal use of the
bicycle, but yet be easily removed by the cyclist so that theft of the wheel is not
likely to occur. As shown in Figure 5, the base area 52a of the handle 52 is
provided with release clip 56 that surrounds a substantial portion of the base of the
handle above the key 54, the release clip being provided with a pair of finger grips
62. The exterior side of the lower portion of the clip 56 is provided with a
protruding rib 58 that is sized for receipt in groove 72 in opening 68 of the wall of
cap 66. As shown in Figure 7A, when the finger grips 62 are squeezed together,
the outside diameter of the clip 56 is reduced somewhat, permitting mating of the
rib 58 and groove 72. When pressure on the finger grips is released, the clip
expands as shown in Figure 7B and the rib is received in the groove locking the
handle 52 and key 54 into the assembly 50.
Appeal No. 2006-1745 Page 4
Application No. 10/010,361

As should be apparent from the above discussion, Denby’s quick release
assembly lacks a magnetic attraction or engagement between the cam and the key,
as called for in each of appellant’s claims on appeal. To overcome this deficiency,
the examiner relies on the teachings of Brown.
Brown discloses a magnetic tool that utilizes magnetic force for holding a
member or workpiece such as screws, bolts, nuts and the like in place thereon to
facilitate the placing of the member in a position to be driven. Brown emphasizes
that the magnetic tool is adapted for use with manually operated tools as well as
with power tools and that its novelty resides in the construction of the magnetic
tool itself rather than in the particular use to which it may be put (col. 1, ll. 52-57).
According to the examiner (answer, p. 4), it would have been obvious to provide
the key and cam of Denby with a magnetic attraction/engagement between the two
elements, as taught by Brown, “in order to better retain the two elements in
engagement.”
As stated in In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000),
[m]ost if not all inventions arise from a
combination of old elements. Thus, every element of a
claimed invention may often be found in the prior art.
However, identification in the prior art of each individual
part claimed is insufficient to defeat patentability of the
whole claimed invention. Rather, to establish
obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the
Appeal No. 2006-1745 Page 5
Application No. 10/010,361

specific combination that was made by the applicant
[citations omitted].

In this instance, the examiner has not pointed to any teaching or suggestion
in either of the applied references that would have led one of ordinary skill in the
art to believe that the magnetic arrangement taught by Brown would better secure
Denby’s handle and key to the cam than the release clip and rib arrangement of
Denby securing the handle and key to the cap. Moreover, given the different
relationship between the magnetic tool and workpiece or other member of Brown
and the handle and cam of Denby, with the Brown magnetic tool holding the
member in place thereon to facilitate placing of the member in a position to be
driven and Denby’s clip and rib serving to secure the handle 52 onto the cap 66,
which houses the cam 74 and piston 64, while the bicycle is in use, it is not
apparent why one of ordinary skill in the art would look to such a magnetic tool for
improvements in the securement means of Denby. Additionally, even assuming a
person of ordinary skill in the art would have found suggestion to replace the clip
and rib securement arrangement of Denby with a magnetic arrangement as taught
by Brown, the appellant’s argument (brief, p. 5) that there is no teaching in either
reference of where to incorporate a magnetic attraction is well taken. Inasmuch as
Denby’s securement arrangement is between the handle 52 and the cap 66, it would
appear that, in the absence of appellant’s disclosure, such a person would have
immediately envisioned a magnetic attraction between the handle and the cap,
rather than between the handle and the cam, as called for in appellant’s claims.
Appeal No. 2006-1745 Page 6
Application No. 10/010,361

CONCLUSION
To summarize, the decision of the examiner to reject claims 20-38 is
REVERSED.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1745 Page 7
Application No. 10/010,361

MICHAEL WINFIELD GOLTRY
4000 N. CENTRAL AVENUE, SUITE 1220
PHOENIX, AZ 85012