Ex Parte EckertDownload PDFPatent Trials and Appeals BoardMay 31, 201914953395 - (D) (P.T.A.B. May. 31, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/953,395 11/29/2015 Cameron Eckert 23644 7590 06/04/2019 Barnes & Thornburg LLP (CH) P.O. Box 2786 Chicago, IL 60690-2786 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 76381-280632(091161-0771) 2162 EXAMINER COOLMAN, VAUGHN ART UNIT PAPER NUMBER 3618 NOTIFICATION DATE DELIVERY MODE 06/04/2019 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): Patent-ch@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CAMERON ECKER T1 Appeal2018-007673 Application 14/953,395 Technology Center 3600 Before JOHN C. KERINS, DANIELS. SONG, and MICHAEL L. HOELTER, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 1-17 in the present application. App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We REVERSE. 1 The Appellant is the Applicant, Radio Flyer Inc., which is identified as the real party in interest. Appeal Brief ("App. Br.") 3. Appeal2018-007673 Application 14/953,395 The claimed invention is directed to a scooter. Abstract. Representative independent claim 1 reads as follows: 1. A scooter comprising: a deck; a handlebar connected to the deck; a front wheel assembly provided adjacent a proximal end of the deck, the front wheel assembly having a front axle and a front wheel, and a rear wheel assembly provided adjacent a distal end of the deck; and, steering mechanism between the deck and the front wheel assembly, the steering mechanism comprising: a steering post extending in a direction generally perpendicular to a longitudinal axis of the front axle; a longitudinally extending spring member provided around the steering post, the spring member having a first end and a second end; a steering housing connected to the front axle, the steering housing having a first spring member cavity to receive the first end of the spring member, the steering housing also having a first steering limiter wall and a second steering limiter wall; a bottom fixture having a second spring member cavity to receive a second end of the spring member; a bushing positioned around a portion of the spring member and between ends of the spring member, the bottom fixture positioned on one side of the bushing and the steering housing positioned on an opposing side of the bushing; a first stop that engages the first steering limiter wall in a first direction; and, a second stop that engages the second steering limiter wall in the second direction. App. Br. 16 (Claims App'x, emphasis added). 2 Appeal2018-007673 Application 14/953,395 Independent claim 9 is similarly directed to a scooter having a steering mechanism with a "spring member extending through an opening in the first bushing such that a first end of the spring member is on one side of the first bushing and the second end of the spring member is on an opposing side of the first bushing." App. Br. 17-18 (Claims App'x). REJECTIONS The Examiner rejects claims 1-7 and 9-15 under 35 U.S.C. § 103 as obvious over Chan (US 2014/0042717 Al, pub. Feb. 13, 2014) in view of Chang (US 6,913,272 B2, iss. July 5, 2005). Final Act. 2. The Examiner rejects claims 8, 16, and 17 under 35 U.S.C. § 103 as obvious over Chan in view of Chang2 and Chen (US 8,696,000 Bl, iss. Apr. 15, 2014). Final Act. 7. ANALYSIS The Examiner finds that Chan discloses a scooter as substantially claimed in independent claims 1 and 9, but "fails to explicitly disclose a bushing as claimed." Final Act. 2-5. As to claim 1, the Examiner finds that "Chang teaches a steering mechanism including a bushing 72 or 82 between two rotatable portions of the steering mechanism." Final Act. 3. As to claim 2 The heading in the Final Office Action for Rejection 2 does not include Chang. Final Act. 7. However, it is evident that this was an oversight, as the rejection of these dependent claims is premised on the rejection of independent claims 1 and 9 in Rejection 1, which relies on Chang. Final Act. 7; see also Ans. 7 ( correcting the heading for Rejection 2 to include Chang). 3 Appeal2018-007673 Application 14/953,395 9, the Examiner finds that bushing 72 or 82 of Chang is positioned between a deck and an axle of the steering mechanism. Final Act. 5. Based on the above findings, the Examiner concludes that it would have been obvious for one of ordinary skill in the art to have "modif1ied] the steering mechanism of Chan with the bushing of Chang in order to, according to Chang, 'decrease friction between' the rotating parts." Final Act. 3 ( quoting Chang, col. 4, 1. 66). According to the Examiner, such combination would result in a bushing positioned between the ends of the spring member in Chan as required by claims 1 and 9. Final Act. 3, 5. The Appellant only submits arguments directed to independent claims 1 and 9 of Rejection 1. The Appellant argues that Chan and Chang, and their combination, fail to teach or suggest the limitation of claims 1 and 9 at issue (App. Br. 11 ), which requires the bushing be positioned between the ends of the spring. Specifically, the Appellant argues that "the bearing surfaces in Chan are outside the ends of the spring 70 [i.e., biasing device] of Chan" instead of between the ends of the biasing device 70. App. Br. 13. The Appellant further argues that "[ n ]either washer/bushing 72 nor washer/bushing 82 [ of Chang] are positioned around a spring at all as required by claims 1 and 9" (App. Br. 12). Indeed, the Appellant is correct that, in Chang, the bushings are provided around the base pivot shaft 70 and the wheel seat pivot shaft 80, and not around the biasing device. Chang, Fig. 3. According to the Appellant, even if it were possible to combine washer/bushing 72 or 82 of Chang with Chan, it would, at most, result in positioning the washer/bushing 72 or 82 around the center post of Chan ... and not positioned around the spring 72 of Chan. App. Br. 13. 4 Appeal2018-007673 Application 14/953,395 The Examiner responds that the base pivot shaft 70 of Chang is "analogous to the shaft and spring member 70 of Chan." Ans. 8. However, this analogy is problematic considering that Chang discloses not only the base pivot shaft 70 that directly corresponds to pivot 51 of Chan, it also discloses a restoring member 51 made of an elastic block that corresponds to the biasing device 70 of Chan. Compare Chang (col. 4, 11. 54-61; Figs. 3, 4) with Chan (iJiJ 17, 26). The Examiner alternatively explains that it would have been obvious to one of ordinary skill in the art to have provided a bushing at the contacting surfaces of Chan. Ans. 9. In this regard, the Examiner rejects the Appellant's argument that the bearing surfaces in Chan are outside the ends of the biasing device 70 of Chan, the Examiner finding that "there are only two possible bearing surface interfaces in Chan," 3 either of which are "within the longitudinal length" of the biasing device 70. Ans. 13. In support of that finding, the Examiner provides in the Answer, an annotated version of Figure 5 of Chan as reproduced below. 3 We observe that this finding does not appear to be technically correct considering that Chan clearly discloses that pivot 51 includes a stepped, shoulder portion. Chan, Fig. 5. 5 Appeal 2018-007 673 Application 14/953,395 Ans. 11. ·, ....... -... ····· Figure 5 of Chan reproduced above includes Examiner-added annotations "A " "B " "X " "Y " and arrows associated therewith that point ' ' ' ' to various surfaces of Chan's steering mechanism. The Examiner explains that one of ordinary skill in the art would have been motivated to provide a bushing at the contacting surfaces A/Band/or X/Y for the benefit of allowing for "quicker, and/or requiring less user effort to produce, relative rotation between the two steering mechanism components and at the same time maintain[ing] a desired spacing between 62 and 64, thereby aiding in the prevention of binding between the two steering mechanism components." Ans. 9-10; see also id. at Ans. 10-11. The Examiner also finds that "in any of the bearing contact surface 6 Appeal2018-007673 Application 14/953,395 configurations mentioned above, both pairs of contact surfaces are inside the ends (longitudinally located between the top and bottom surfaces) of spring member 70 of Chan." Ans. 14. Initially, we find no fault in the Examiner's general reasoning that it would have been obvious to a person of ordinary skill in the art to have provided a bushing at contacting surfaces to reduce user effort and to prevent binding. However, we again determine the Examiner's findings underlying the rejection are problematic, because it is unlikely, or at least speculative that the identified surfaces "A" and "B " or "X" and "Y " are ' ' ' contacting surfaces. As to surfaces "A" and "B," even the Examiner states that "figure 3 of Chan appears to show that 'lower housing 64' and 'upper housing 62' have a gap between bearing surfaces A and B." Ans. 13-14; Chan Fig. 3. It is not apparent how surfaces that are spaced apart can be considered as contacting, or why a person of ordinary skill in the art would provide a bushing between non-contacting surfaces. As to surfaces "X" and "Y," we observe that the hexagonal inner surface 63 of the first portion 62 (i.e. upper housing) and the hexagonal inner surface 65 of the second portion 64 (i.e. lower housing) are depicted in Chan as being shallow so that their combined depth is noticeably less than the length of the hexagonal biasing device 70.4 Chan, Figs. 5, 6. Thus, when 4 It is understood that drawings are not to be scaled if the specification is silent on the issue (see Hockerson-Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951 (Fed. Cir. 2000)), however, we are also instructed that drawings are to be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art (see In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)). 7 Appeal2018-007673 Application 14/953,395 assembled, the first portion 62 and the second portion 64 would engage the circumferential surface 72 toward the end portions of the biasing device 70, but not fully encapsulate the biasing device 70 in a manner that the surfaces "X" and "Y" can be said to contact each other. Furthermore, the Specification of Chan discloses that the biasing device 70 is an elastic member of silicone rubber and that the circumferential surface 72 ( of the biasing device 70) and the internal surfaces 63, 65 (of the first and second portions 62, 64) cause the biasing device to be twisted with the second portion when the front wheel axle 50 is steered .... When force is applied by the user on the steering member 60 to steer the front wheel axle 50, the biasing device 70 is twisted from the released condition to the distorted condition. When the user releases his force on the steering member 60 to steer the front wheel axle 50, the biasing device returns to the released condition, such that the front wheel axle is steered back and the front wheels 10 are returned to the straight position for the scooter 5 to go in a straight course. Chan ,-J,-J 27-28; see also id. ,-i 26. If the first portion 62 and the second portion 64 fully encapsulate the biasing device 70 such that the surfaces "X" and "Y" contact each other as the Examiner asserts, it is not apparent how the biasing device 70 can be made to twist to a degree that allows for effective steering of the front wheel axle 50. Instead, if the surfaces "X" and "Y" contact each other, the biasing device 70 would be subject to substantial torsional shear force along its length at a plane corresponding to the allegedly contacting surfaces "X" and "Y." It is speculative to find that such application of a shear force would result in material twisting of the biasing device in the manner described by Chan. Accordingly, in view of the illustrated drawings of Figures 5 and 6 of 8 Appeal2018-007673 Application 14/953,395 Chan, and the description of its operation, we find the Examiner's assertion that the surfaces "X" and "Y" contact each other to be speculative and unsupported by Chan. Therefore, in view of the above considerations, we reverse the Examiner's rejection of independent claims 1 and 9. The remaining argument directed to engagement of the stops (App. Br. 13, Ans. 14) is moot. Accordingly, the Examiner's rejection of dependent claims 2-7 and 9-15 are also reversed. The Examiner's rejection of claims 8, 16, and 17 does not rely on Chen in any manner that cures the above-noted deficiencies in the combination of Chang and Chan. Final Act. 7. Accordingly, the rejection of these claims are reversed as well. CONCLUSION The Examiner's rejections of claims 1-17 are REVERSED. REVERSED 9 Copy with citationCopy as parenthetical citation