Ex Parte GOUGH

Board of Patent Appeals and Interferences

Sep 24, 2010

07683484 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
07/683,484 04/09/1991 STEPHEN J. GOUGH 5540
7590 09/24/2010
STEPHEN JOHN GOUGH
P.O.BOX 205
AVON, NJ 07717-0205
EXAMINER
KING, ANITA M
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
09/24/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN J. GOUGH
____________

Appeal 2009-012282
Application 07/683,484
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Stephen J. Gough (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 168, 183, and 184 under 35
U.S.C. § 102(e) as being anticipated by Greenberg (US 4,957,306, iss. Sep.
18, 1990); claims 169-176 and 185-187 under 35 U.S.C. § 103(a) as being
unpatentable over Greenberg; and claims 168-171 and 173-187 under 35
U.S.C. § 103(a) as being unpatentable over Burkholder (MOTHER’S Plans
For Building the GARDEN CART, The Mother Earth News, 1987) and
Greenberg. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002). Appellant presented oral argument on September 14, 2010.
The application before us was the subject of a previous decision of the
Board (Ex parte Gough, Appeal No. 94-3332 (BPAI Nov. 25, 1994))
(hereinafter “Previous Decision”).
The Invention
Appellant’s claimed invention is directed to wheel mounting brackets
for mounting bicycle wheels to various vehicle structures, a method for
attaching such brackets to vehicle structures, and vehicle structures having
such brackets mounted thereto. Spec. 7. Claim 168, reproduced below, is
illustrative of the claimed subject matter.
168. Identical industrially and commercially mass-produced
brackets for mounting vehicle wheels having individual
independent axles, comprising:
a) simple, versatile, identical means for securely
attaching pairs of said brackets to parallel longitudinal
frame members of various different vehicles, and
typically to frame members made of wood or common
structural lumber,
b) simple, versatile, identical means for securely
mounting all common bicycle wheels in between two
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separate identical said brackets, that enable the wheels to
be detachable and interchangeable without removing said
brackets from said vehicles and without partially
dismantling the vehicle frames, and whereby, in
combination with said means for securely attaching, the
same identical said brackets effectively are standardized
and made universal and applicable worldwide for simple
versatile secure mounting of all common bicycle wheels
on widely diverse small vehicles, including carts, wagons
and wheelbarrows, and especially homemade vehicles
without need for an industrial or commercial vehicle
manufacturing operation.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Anticipation by Greenberg
Claim 168
The issue raised by Appellant in contesting this rejection is whether
Greenberg’s brackets 44 satisfy the limitation in claim 168 that they
comprise “means for securely mounting all common bicycle wheels in
between two separate identical said brackets” such that the brackets are
standardized “for simple versatile secure mounting of all common bicycle
wheels.” See App. Br. 12-13. In essence, Appellant argues that the wheel
space enclosed by the truss-like box 46 of Greenberg’s bracket 44 is not
variable, thus rendering the brackets incapable of mounting all common
bicycle wheels. App. Br. 12.
Initially, we note that claim 168 does not positively recite that the
brackets, or any portions thereof, are variably spaced. Rather, claim 168
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calls for brackets comprising two elements: (1) “means for securely
attaching pairs of said brackets to parallel longitudinal frame members of
various different vehicles” and (2) “means for securely mounting all
common bicycle wheels in between two separate identical said brackets.”
The Examiner found that Greenberg’s mounting plates 58, 62,
provided with screw holes 58a and 62a, satisfy element (1) (the “means for
securely attaching”). Ans. 3. Appellant has not disputed that finding, which
we thus adopt.
The Examiner found that slots 52 in Greenberg’s brackets 44 satisfy
element (2) (the “means for securely mounting all common bicycle
wheels”). Ans. 3. For the reasons that follow, the Examiner’s finding is
correct.
Element (2) is recited in the form of means for performing a specified
function (securely mounting all common bicycle wheels) without the recital
of sufficient structure for performing said function. Thus, element (2) is a
“means-plus-function” limitation pursuant to 35 U.S.C. § 112, sixth
paragraph.
In order to meet a “means plus function” limitation, the prior art must
(a) perform the identical function recited in the means limitation and (b)
perform that function using the structure disclosed in the specification or an
equivalent structure. See Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15
F.3d 1573, 1578 (Fed. Cir. 1993); Valmont Indus., Inc. v. Reinke Mfg. Co.,
983 F.2d 1039, 1042 (Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d
1574, 1580 (Fed. Cir. 1989).
Greenberg’s slot 52 provides the identical function recited in the
means limitation and performs that function using the structure disclosed in
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Appellant’s Specification, or at least an equivalent thereof. In particular, we
find that the structure described in Appellant’s Specification for performing
the function of securely mounting all common bicycle wheels is slot 32, and
that the slot 32 performs this function by receiving the axle of “nearly any
modern bicycle wheel (26), making it universal and in effect, standardizing
the bicycle wheel bracket.” Spec. 14. We also find that Greenberg’s slot 52
accommodates the axle of a bicycle wheel 18, which may be a “standard
bicycle wheel[].” Col. 3, ll. 12-13, 44-45. Further, we find that the V-shape
of Greenberg’s slot 52 provides a variable slot width that will accommodate
a variety of different bicycle wheel axle diameters, thus adapting it for
receiving the axle of nearly any modern bicycle wheel and making it, in
effect, universal and standardized.
We recognize that Greenberg describes a wheel mounting
arrangement in which the bicycle wheel 18 is mounted within the box 46 of
a single bracket 44, not between two identical brackets 44. However,
Appellant’s claim 168 does not in fact require a wheel to be mounted
between two separate identical said brackets. Indeed, while structure for
mounting bicycle wheels is recited, none of Appellant’s claims positively
includes bicycle wheels. Limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
For the reasons discussed in the preceding paragraph, we find that any
common bicycle wheel could be mounted securely between two of
Greenberg’s brackets 44, with the axles received in slots 52, as called for in
claim 168.
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For the above reasons, we are not convinced that the rejection of
claim 168 as anticipated by Greenberg should be reversed. We sustain the
rejection.
Claims 183 and 184
In contesting the anticipation rejection of these claims, Appellant
relies on the arguments asserted against the rejection of claim 168. App. Br.
13. For the reasons discussed above, these arguments are not persuasive.
Appellant additionally points out that claims 183 and 184, unlike
claim 168, claim the invention in the context of a vehicle structure, without
articulating any reason why this aspect of the claims distinguishes over the
teachings of Greenberg. Id. Statements which merely point out additional
claim recitations do not constitute separate arguments for patentability. 37
C.F.R. § 41.37(c)(1)(vii).
We are not convinced that the rejection of claims 183 and 184 as
anticipated by Greenberg should be reversed. We sustain the rejection.
Obviousness in view of Greenberg
In contesting this rejection, Appellant provides an argument for the
separate patentability of claims 170, 174, and 185 (App. Br. 40, 42, 44, 46,
47, 48), but does not present any arguments as to why the remainder of the
claims subject to this rejection are separately patentable.2 Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 172 as
representative of the first group, with claims 169, 171, 173, 186, and 187

2 On pages 39-45 (incorporated on pages 46-49), Appellant points out
additional features of the invention recited in each claim and broadly alleges
that these features render the claims separately patentable. Such statements
merely pointing out what a claim recites are not separate arguments for
patentability. 37 C.F.R. § 41.37(c)(1)(vii).
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standing or falling with claim 172. We address the specific argument with
respect to claims 170, 174, and 185 separately. Claims 175 and 176 stand or
fall with claim 174, from which they depend.
Appellant argues that Greenberg does not suggest the versatility
afforded by the features of Appellant’s invention. App. Br. 18-20 and 46.
Relying on his “DECLARATION UNDER 37 C.F.R. §1.132” (Evidence
Appendix, Exhibit H, hereinafter “Gough Declaration”) and
“INFORMATION DISCLOSURE STATEMENT” (Evidence Appendix,
Exhibit I, hereinafter “IDS”), Appellant additionally argues that Appellant’s
invention satisfies a long-felt, but unrecognized need, in that Appellant’s
invention solves a previously unsolvable problem: how to simply and easily
attach various common bicycle wheels to various small vehicles. App. Br.
22-23, 46. Citing Exhibits A and B of the Evidence Appendix, Appellant
argues that Appellant’s invention has achieved surprising and unexpected
results. App. Br. 24-28, 46. Appellant also argues that the simplicity,
obviousness in retrospect, extraordinary utility, and prior lack of
implementation of Appellant’s invention in a crowded art prove the
nonobviousness of Appellant’s invention. App. Br. 29-33, 46. Appellant
additionally argues that the prior art wheel brackets are designed for specific
applications, thus teaching away from Appellant’s invention. App. Br. 38,
46.
With respect to claims 1703, 174, and 185, Appellant additionally
argues that Greenberg does not teach an open slot and its use to securely
support the larger sizes of bicycle wheels. App Br. 40, 42, 44, 46, 47, 48.

3 We treat claim 170 with this group of claims because it also includes the
open-ended slot limitation.
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In light of Appellant’s arguments, the issues raised in this appeal are
whether the record as a whole, including both the evidence of obviousness
and the evidence of nonobviousness, supports the Examiner’s conclusion
that the subject matter of claim 172 would have been obvious to a person of
ordinary skill in the art, and whether the record as a whole supports the
Examiner’s conclusion that the subject matter of claims 170, 174, and 185,
including the open-ended slot, would have been obvious to a person of
ordinary skill in the art in view of Greenberg.
Appellant’s arguments regarding Greenberg’s lack of a suggestion of
the versatility afforded by Appellant’s invention and lack of teaching of an
open-ended slot are not convincing. For the reasons set forth above in the
discussion of the anticipation rejection, we find that Greenberg’s brackets,
with their V-shaped slots 52, do afford the versatility to securely mount all
common bicycle wheels. Further, Greenberg’s reference to “standard
bicycle wheels” (col. 3, ll. 44-45), without limitation to any particular size
bicycle wheel, suggests that the width of the V-shaped slot should vary over
at least a range to accommodate the axles of standard (common) bicycle
wheels. Inasmuch as common standard bicycle wheels include those with
diameters measuring between approximately 8 mm and 10 mm (Spec. 14),
Greenberg’s teachings of a V-shaped slot having a variable width therefore
suggest a slot width range encompassing 11 mm, as called for in claims 170,
174, and 185. Additionally, we find that Greenberg’s V-shaped slot 52
satisfies the requirement in claims 170, 174, and 185 of an open-ended slot.
To the extent that Appellant may be arguing that Greenberg does not
suggest a mass-produced bracket (App. Br. 20, item f)), we find that
Greenberg’s bracket 44 is amenable to being mass-produced. Indeed, at the
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time of Appellant’s invention, mass-production of parts was such a well-
established practice that persons of ordinary skill in the art reading
Greenberg’s disclosure would have immediately recognized the
susceptibility of Greenberg’s structure, including the brackets, to mass-
production.
Moreover, the term “mass-produced” is a product-by-process
limitation that would not, in our view, distinguish the claimed brackets from
brackets 44 of Greenberg. The patentability of a product does not depend on
its method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior art product was made by a different process. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Appellant asserts that the present invention solves a long-felt need,
but concedes that the need is a “yet unrecognized” need (App. Br. 22).
Thus, Appellant’s assertion is unavailing as an indicium of nonobviousness.
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539 (CCPA 1967). “[L]ong-felt need is analyzed as
of the date of an articulated identified problem and evidence of efforts to
solve that problem.” Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178
(Fed. Cir. 1993).
The Gough Declaration constitutes argument only, and not evidence,
because it does not satisfy the formal requirements of an oath (made before a
person within the United States authorized to administer oaths, 37 C.F.R.
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§ 1.66) and also does not satisfy the requirements of a declaration in lieu of
oath (37 C.F.R. § 1.68), in that it does not state that declarant has been
warned that willful false statements and the like are punishable by fine or
imprisonment, or both, and may jeopardize the validity of the application or
any patent issuing thereon.
Further, in any event, while the Gough Declaration asserts that the
IDS and discussion of prior art in the Specification provide examples of
objective evidence of this long-standing or long-felt need, Appellant does
not specifically point out where either the Specification or IDS provides
evidence that persons of ordinary skill in the art recognized a need for, and
tried without success to provide, a simple and easy way to attach various
common bicycle wheels to various small vehicles. The examples in
Appellant’s Specification and the description of the references cited in the
IDS appear to show nothing more than that many arrangements for mounting
wheels to wheeled vehicles were known in the art at the time of Appellant’s
invention.
Moreover, absent a showing of long-felt need or the failure of others,
the mere passage of time without the claimed invention is not evidence of
nonobviousness. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1324-25 (Fed. Cir. 2004). Thus, Appellant’s arguments with respect to the
simplicity, obviousness in retrospect, extraordinary utility, and prior lack of
implementation of Appellant’s invention in a crowded art are unavailing to
prove the nonobviousness of Appellant’s invention.
Appellant alleges that the present invention has achieved surprising
and unexpected results. “A greater than expected result is an evidentiary
factor pertinent to the legal conclusion of obviousness” of the claimed
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subject matter. In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (citing
United States v. Adams, 383 U.S. 39, 51-52 (1966). In this case, however,
the examples and evidence, including the letters from a representative from
the Trinidad and Tobago Mission to the United Nations (Evidence
Appendix, Exhibit A) and from the Chief, Agricultural Engineering Service,
Agricultural Services Division, Food and Agriculture Organization of the
United Nations, relied upon by Appellant, show nothing more than
Appellant’s hopes, expectations, and efforts to promote his invention. At
best, these letters indicate little more than that Appellant’s brackets may be
viewed by others as probably being useful for their intended purpose, and
are entitled to relatively little weight in the obviousness determination. It is
well settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the Specification does not
suffice. Arguments relying on factually unsupported assumptions to rebut a
prima facie case of obviousness “can hardly be considered factual evidence.”
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Finally, we do not agree with Appellant that Greenberg teaches away
from Appellant’s invention. Prior art does not teach away from claimed
subject matter merely by disclosing a different solution to a similar problem
unless the prior art also criticizes, discredits or otherwise discourages the
solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As discussed above in the context of the anticipation rejection, we do not
find that Greenberg describes a wheel mounting that lacks versatility. On
the contrary, Greenberg’s V-shaped slot and reference to “standard bicycle
wheels” (col. 3, ll. 44-45), without limitation to any particular size bicycle
wheel, suggests at least a degree of standardization/versatility to accept
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bicycle wheels of different sizes. In any event, even to the extent that
Greenberg’s teachings are particularly directed to hand carts, Greenberg
does not criticize, discredit, or otherwise discourage a wheel mounting
bracket such as that of Appellant, which arguably may provide even more
versatility.
After reviewing the totality of the evidence and arguments presented
by both Appellant and the Examiner, including all of the arguments on pages
14-49 of the Appeal Brief, we conclude that the Examiner did not err in
concluding that the subject matter of claim 172, and the subject matter of
claims 170, 174, and 185 would have been obvious to a person of ordinary
skill in the art at the time of Appellant’s invention. We sustain the rejection
of claims 169-176 and 185-187 as being unpatentable over Greenberg.
Obviousness – Burkholder and Greenberg
Appellant presents separate arguments for the patentability of claims
170, 174, and 185. App. Br. 40, 42, 44. Appellant does not present any
arguments as to why the remainder of the claims subject to this rejection are
separately patentable.4 Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we select claim 168 as representative of this group, with
claims 169, 171, 173, 177-184, 186, and 187 standing or falling with claim
168. We address the specific argument directed to claims 170, 174 and 185
separately. Claims 175 and 176 stand or fall with claim 174, from which
they depend.

4 On pages 39-45, Appellant points out additional features of the invention
recited in each claim and broadly alleges that these features render the
claims separately patentable. Such statements merely pointing out what a
claim recites are not separate arguments for patentability. 37 C.F.R.
§ 41.37(c)(1)(vii).
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In rejecting claim 168, the Examiner found that Burkholder describes
pairs of axle supports satisfying all of the limitations of the claimed
“brackets” of claim 168. Ans. 6-7. Nonetheless, the Examiner further found
that Greenberg evidences that it was well known to mount wheels to carts,
small trailers, or wheelbarrows using brackets provided with an open-ended
slot as a means for securely mounting the wheels.5 Ans. 9. The Examiner
then concluded that it would have been obvious to replace the axle supports
of Burkholder with brackets as taught by Greenberg (having open-ended V-
shaped slots 52). Id.
We agree with the findings and reasoning of the panel of the Board on
pages 13-16 of the Previous Decision, and incorporate them herein. In short,
we agree that the ease of assembly associated with the open-ended slot of
Greenberg would have provided one of ordinary skill in the art with an
apparent reason to modify Burkholder’s axle support structure to incorporate
such a construction, as taught by Greenberg.
In addition to the arguments asserted against the rejection of the
claims as unpatentable over Greenberg, discussed above, Appellant also
argues that Burkholder’s design would not function with larger diameter
wheels, such as 26 or 27-inch wheels, because of torsion and twisting forces.
App. Br. 16.
In light of Appellant’s arguments, the issues raised in this appeal are
whether the record as a whole, including both the evidence of obviousness
and the evidence of nonobviousness, supports the Examiner’s conclusion

5 Our findings and the findings of the Examiner with respect to Greenberg
are discussed in more detail above in addressing the rejections based on
Greenberg alone.
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that the subject matter of claim 168 would have been obvious to a person of
ordinary skill in the art, and whether the record as a whole supports the
Examiner’s conclusion that the subject matter of claims 170, 174, and 185,
including the open-ended slot, would have been obvious to a person of
ordinary skill in the art in view of Burkholder and Greenberg.
Appellant’s argument that Burkholder’s design is insufficient to
accommodate common bicycle wheels of larger diameter than the 20-inch
wheels specifically disclosed by Burkholder is not convincing. First,
Appellant’s argument is not supported by any evidence that the use of larger
diameter wheels on Burkholder’s cart necessarily would be problematic.
Arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Moreover, even assuming that additional
bracing or other modifications of the cart structure would be required to
accommodate larger diameter wheels, there is no indication in this record
that such modifications would have been beyond the technical grasp of a
person of ordinary skill in the art. After all, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 421(2007).
To avoid repetition, we incorporate herein our discussion above with
respect to Appellant’s arguments directed to versatility, use of an open slot
to securely support larger sizes of bicycle wheels, mass-production, long-felt
need, lack of implementation, unexpected results, and teaching away. We
add that we also do not agree with Appellant that Burkholder teaches away
from Appellant’s invention. Burkholder does not in any way criticize,
discredit, or otherwise discourage a wheel mounting bracket such as that of
Appellant, which may provide more versatility.
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After reviewing the totality of the evidence and arguments presented
by both Appellant and the Examiner, including all of the arguments on pages
14-45 of the Appeal Brief, we conclude that the Examiner did not err in
concluding that the subject matter of claim 168, and the subject matter of
claims 170, 174, and 185 would have been obvious to a person of ordinary
skill in the art at the time of Appellant’s invention. We sustain the rejection
of claims 168-171 and 173-187 as being unpatentable over Burkholder and
Greenberg.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

STEPHEN JOHN GOUGH
P.O.BOX 205
AVON, NJ 07717-0205