Ex parte ENDA

Board of Patent Appeals and Interferences

Oct 31, 2001

08609381 (B.P.A.I. Oct. 31, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RYUICHI ENDA
____________
Appeal No. 1999-2799
Application No. 08/609,381
____________
HEARD: OCTOBER 24, 2001
____________
Before COHEN, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-19, which are all of the claims pending
in this application.
BACKGROUND
The appellant's invention relates to a pivoted saddle-
type seat for a vehicle having a seat post (specification,
Appeal No. 1999-2799 Page 2
Application No. 08/609,381
An English language translation of this reference, prepared by the1
Patent and Trademark Office, is appended hereto.
page 2). A copy of the claims under appeal is set forth in
the appendix to the appellant's brief.
The examiner relied upon the following prior art
references of record in rejecting the appealed claims:
Christoffel 5,562,322 Oct. 8, 1996
Davies 408,954 Apr. 13, 1934
(British patent specification)
Suzuki et al. (Suzuki) JP 6270867 Sep. 27, 19941
(published unexamined Japanese patent application)
Claims 1-15 and 19 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Davies in view of
Christoffel.
Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Davies in view of Christoffel and
Suzuki.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 17) for
the examiner's complete reasoning in support of the rejections
Appeal No. 1999-2799 Page 3
Application No. 08/609,381
and to the brief (Paper No. 16) 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 references, and to the
respective positions articulated by the appellant and the
examiner. For the reasons which follow we cannot sustain the
examiner's rejection.
The examiner contends that Davies discloses the subject
matter of independent claim 1 with the exception of the
feature that the second latching member is selectively
moveable to a released position free of engagement with the
first latching member when the seat is in its normal riding
position, and appellant does not take issue with this
contention. As is apparent from Davies' discussion on page 2,
in lines 110-126, Davies' second latching members (spring
controlled balls provided in the portion b2), which are
adapted to engage with corresponding recesses (first latching
members) in the inner faces of the cheeks of the head a1, are
moveable to the released position free of engagement with the
Appeal No. 1999-2799 Page 4
Application No. 08/609,381
recesses only when the seat is pivoted out of its riding
position.
To overcome the above-noted deficiency, the examiner
urges that it would have been obvious to one of ordinary skill
in the art to have utilized the latching system as taught by
Christoffel in the Davies device "since such a modification is
merely a substitution of one known latching arrangement for
another alternate equivalent latching system performing the
same intended function, i.e., to provide for a pivotal saddle-
type seat" (answer, page 4). For the following reasons, the
examiner's position in this regard is not well taken.
First, the examiner has not proffered any evidence
establishing that the simple detent arrangement of Davies and
the latching system of Christoffel are, or would have been
recognized as, functional equivalents. In fact, Christoffel's
latching system is not disclosed as providing a pivotal
saddle-type seat, as the examiner's statement implies.
Rather, Christoffel's latching system is used for securing or
releasing a removable vehicle seat, especially a motor vehicle
seat, to a vehicle structure.
Appeal No. 1999-2799 Page 5
Application No. 08/609,381
Second, expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another.
In re Scott, 323 F.2d 1016, 1019, 139 USPQ 297, 299 (CCPA
1963). The test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In this
instance, we perceive no teaching or suggestion in the applied
references to replace the simple and easy to use spring
controlled ball detent arrangement of Davies with a
complicated, expensive and cumbersome latching system as
taught by Christoffel. From our perspective, the only
suggestion for putting the selected pieces from the references
together in the manner proposed by the examiner is found in
the luxury of hindsight accorded one who first viewed the
appellant's disclosure. This, of course, is not a proper
basis for a rejection. See In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
Accordingly, we shall not sustain the examiner's
rejection of claims 1-15 and 19 as being unpatentable over
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Application No. 08/609,381
Davies in view of Christoffel. Further, in that the above-
noted deficiency in the combination of Davies and Christoffel
finds no cure in the teachings of Suzuki, we also shall not
sustain the examiner's rejection of claims 16-19 as being
unpatentable over Davies in view of Christoffel and Suzuki.
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Application No. 08/609,381
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-19 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2799 Page 8
Application No. 08/609,381
ERNEST A. BEUTLER
ATTORNEY AT LAW
500 NEWPORT CENTER DRIVE
SUITE 945
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