Ex parte Englander

Board of Patent Appeals and Interferences

Dec 21, 1999

08517198 (B.P.A.I. Dec. 21, 1999)

Application for patent filed August 21, 1995. According1
to the appellant, the application is a continuation of
Application No. 08/117,690, filed September 8, 1993, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CURT ENGLANDER
____________
Appeal No. 1999-2094
Application No. 08/517,1981
____________
ON BRIEF
____________
Before NASE, CRAWFORD, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 14 through 22, which are all of the claims
pending in this application.
Appeal No. 1999-2094
Application No. 08/517,198
We AFFIRM-IN-PART.
Appeal No. 1999-2094 Page 3
Application No. 08/517,198
BACKGROUND
The appellant's invention relates to an apparatus for
carrying a bicycle on a vehicle roof (specification, p. 1).
An understanding of the invention can be derived from a
reading of exemplary claims 14, 21 and 22 (the independent
claims on appeal), which appear in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Will 2,521,815 Sep.
12, 1950
Vanzant 4,717,054 Jan. 5,
1988
Mottino 5,284,282 Feb. 8,
1994
(filed July 21, 1992)
Claims 14 through 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Mottino in view of Vanzant and
Will.
Appeal No. 1999-2094 Page 4
Application No. 08/517,198
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 37,
mailed February 16, 1999) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 36, filed November 13, 1998) for the appellant's arguments
thereagainst.
OPINION
Initially we note that the issue of whether the final
rejection was improper relates to a petitionable matter and
not to an appealable matter. See Manual of Patent Examining
Procedure (MPEP) §§ 1002 and 1201. Accordingly, we will not
review the issue raised by the appellant on pages 13-14 of the
brief.
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. Upon evaluation of all the evidence before us, it
Appeal No. 1999-2094 Page 5
Application No. 08/517,198
is our conclusion that the evidence adduced by the examiner is
sufficient to establish a case of obviousness only with
respect to claims 14 through 20. Accordingly, we will sustain
the examiner's rejection of claims 14 through 20 under 35
U.S.C.
§ 103. We will not sustain the examiner's rejection of claims
21 and 22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A case of obviousness is established by
presenting evidence that would have led one of ordinary skill
in the art to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Rejections based on § 103 must rest on a factual basis with
these facts being interpreted without hindsight reconstruction
of the invention from the prior art. The examiner may not,
Appeal No. 1999-2094 Page 6
Application No. 08/517,198
because of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction
to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
With this as background, we note that the teachings of
the applied prior art (i.e., Mottino, Vanzant and Will) are
adequately set forth on pages 6-10 of the brief.
Claim 21
We will not sustain the rejection of claim 21 under
35 U.S.C. § 103.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Mottino and claim 21,
it is our opinion that the only difference is the limitation
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Application No. 08/517,198
that the apparatus for carrying a bicycle on a vehicle roof
includes
means for urging the holder to the transport position
from the loading and unloading position, the urging means
including at least one resilient means attached between
the holder and the carrier device, when the holder is in
the loading and unloading position, the resilient means
acting to pivot the holder in a clockwise direction to
urge the holder to be retained in the loading and
unloading position.
With regard to this difference, the examiner determined
(answer, p. 3) that "it would have been obvious to provide the
carrier of Mottino with resilient means as shown by Vanzant
and Will for allowing easier movement of the carrier."
While we agree with the examiner that it would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to have modified the carrier of
Mottino by providing it with resilient means as shown by
Vanzant and Will, this modification of Mottino does not arrive
at the claimed invention. In this regard, we agree with the
appellant (brief, pp. 11) that the resilient/urging means of
Vanzant (i.e., gas cylinder 52) and the resilient/urging means
Appeal No. 1999-2094 Page 8
Application No. 08/517,198
of Will (i.e., springs 32) urge only in the direction towards
the transport position regardless of where the carrier or leg
is positioned. That is, the urging means of Vanzant (i.e.,
gas cylinder 52) and the urging means of Will (i.e., springs
32) never urge the carrier or leg in the direction towards the
loading and unloading position. Thus, in our view, the
combined teachings of the applied prior art would not have
suggested providing the carrier of Mottino with an urging
means which both (1) urges the holder to the transport
position from the loading and unloading position, and (2)
includes at least one resilient means acting to pivot the
holder in a clockwise direction to urge the holder to be
retained in the loading and unloading position.
For the reasons set forth above, the decision of the
examiner to reject claim 21 under 35 U.S.C. § 103 is reversed.
Claim 22
We will not sustain the rejection of claim 22 under
35 U.S.C. § 103.
Appeal No. 1999-2094 Page 9
Application No. 08/517,198
Based on our analysis and review of Mottino and claim 22,
it is our opinion that the only difference is the limitation
that the bicycle holder mountable on a carrier on a vehicle
includes
a spring coupled to said leg, said spring arranged to
urge said leg toward the transport position when said leg
is above said predetermined angle of pivotation and to
urge said leg toward the loading position when the leg is
below said predetermined angle of pivotation.
With regard to this difference, the examiner determined
(answer, p. 3) that "it would have been obvious to provide the
carrier of Mottino with resilient means as shown by Vanzant
and Will for allowing easier movement of the carrier."
Once again, while we agree with the examiner that it
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to have modified the
carrier of Mottino by providing it with resilient means as
shown by Vanzant and Will, this modification of Mottino does
not arrive at the claimed invention. In this regard, we agree
with the appellant (brief, pp. 11) that the urging means of
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Application No. 08/517,198
Vanzant (i.e., gas cylinder 52) and the urging means of Will
(i.e., springs 32) urge only in the direction towards the
transport position regardless of where the carrier or leg is
positioned. That is, the urging means of Vanzant (i.e., gas
cylinder 52) and the urging means of Will (i.e., springs 32)
never urge the carrier or leg in the direction towards the
loading and unloading position. Thus, in our view, the
combined teachings of the applied prior art would not have
suggested providing the carrier of Mottino with a spring which
both (1) urges the leg toward the transport position when said
leg is above a predetermined angle of pivotation, and
(2) urges the leg toward the loading position when the leg is
below the predetermined angle of pivotation.
For the reasons set forth above, the decision of the
examiner to reject claim 22 under 35 U.S.C. § 103 is reversed.
Claim 14
We sustain the rejection of claim 14 under 35 U.S.C. §
103.
Appeal No. 1999-2094 Page 11
Application No. 08/517,198
Based on our analysis and review of Mottino and claim 14,
it is our opinion that the only difference is the limitation
that the bicycle holder mountable on a carrier device on a
vehicle includes
resilient means for urging the leg to the transport
position when the leg is pivoted upward toward the
transport position after passing a first predetermined
angle above the unloading position.
With regard to this difference, the examiner determined
(answer, p. 3) that "it would have been obvious to provide the
carrier of Mottino with resilient means as shown by Vanzant
and Will for allowing easier movement of the carrier."
We agree with the examiner that it would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to have modified the carrier of
Mottino by providing it with resilient means as shown by
Vanzant and Will. Additionally, it is our view that this
modification of Mottino does arrive at the claimed invention.
As set forth above, we agree with the appellant that Vanzant
and Will only teach and suggest urging only in the direction
Appeal No. 1999-2094 Page 12
Application No. 08/517,198
towards the transport position regardless of where the carrier
or leg is positioned. However, it is our opinion that claim
14 only requires urging in the direction towards the transport
position. In that regard, claim 14 is silent as to which
direction, if any, the leg is urged prior to the leg passing
the first predetermined angle above the unloading position.
Accordingly, it is our determination that claim 14 is readable
on the modified carrier of Mottino provided with resilient
means as shown by Vanzant and Will for allowing easier
movement of the carrier from the unloading position to the
transport position.
The appellant's arguments set forth in the brief are
unpersuasive for the following reasons. First, as set forth
above, the applied prior art would have made it obvious at the
time the invention was made to a person having ordinary skill
in the art to arrive at the claimed invention. Second,
contrary to the appellant's assertions (brief, p. 10), Mottino
clearly does teach the at least one pivotally mounted leg as
recited in claim 14 (see Mottino's tube 1) and the at least
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Application No. 08/517,198
one engagement member as recited in claim 14 (see Mottino's
straps 20 and 21).
Lastly, the appellant argues that Vanzant and Will are
non-analogous art. The test for non-analogous art is first
whether the art is within the field of the inventor's endeavor
and, if not, whether it is reasonably pertinent to the problem
with which the inventor was involved. In re Wood, 599 F.2d
1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference is
reasonably pertinent if, even though it may be in a different
field of endeavor, it logically would have commended itself to
an inventor's attention in considering his problem because of
the matter with which it deals. In re Clay, 966 F.2d 656,
659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992). In the present
instance, we are informed by the appellant's originally filed
specification (p. 2) that the invention has for its object a
carrier being designed in such a manner as to obviate the
shortcomings inherent in the prior art and permit a simple and
convenient loading and unloading. In our view, both Vanzant
and Will teach that their resilient means (i.e., gas cylinder
52 of Vanzant and springs 32 of Will) permit a simple and
Appeal No. 1999-2094 Page 14
Application No. 08/517,198
convenient loading and unloading and thus fall at least into
the latter category of the Wood test, and logically would have
commended itself to an artisan's attention in considering the
appellant's problem. Thus, we conclude that both Vanzant and
Will are analogous art.
For the reasons set forth above, the decision of the
examiner to reject claim 14 under 35 U.S.C. § 103 is affirmed.
Claims 15-20
The decision of the examiner to reject claims 15 through
20 under 35 U.S.C. § 103 is also affirmed since the appellant
has not challenged this rejection with any reasonable
specificity, thereby allowing dependent claims 15 through 20
to fall with independent claim 14 (see In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
Appeal No. 1999-2094 Page 15
Application No. 08/517,198
CONCLUSION
To summarize, the decision of the examiner to reject
claims 14 through 20 under 35 U.S.C. § 103 is affirmed and the
decision of the examiner to reject claims 21 and 22 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-2094 Page 16
Application No. 08/517,198
TRACY W. DRUCE
ROYSTON, RAYZOR, VICKERY, NOVAK & DRUCE, L.L.P.
2000 RIVERVIEW TOWERS
111 SOLEDAD
SAN ANTONIO, TX 78205
APPEAL NO. 1999-2094 - JUDGE NASE
APPLICATION NO. 08/517,198
APJ NASE
APJ GONZALES
APJ CRAWFORD
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 07 Dec 99
FINAL TYPED: