Ex Parte Hanagan

Board of Patent Appeals and Interferences

Mar 14, 2007

10137582 (B.P.A.I. Mar. 14, 2007)

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for publication and is not binding precedent of the Board.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 W. HANAGAN
____________

Appeal 2006-3327
Application 10/137,582
Technology Center 3600
____________

Decided: March 14, 2007
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael W. Hanagan (“Appellant”) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1-8, all of the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention relates to a tandem motorcycle saddle having
a backrest, where the saddle may be pivoted into an open position without
removing the backrest (Specification 1). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A tandem saddle assembly for mounting on the frame of
a motorcycle comprising:
(a) a tandem platform member with a driver seat section and
a passenger seat section;
(b) a driver backrest pod secured to said driver section of
said platform member adjacent the rear end of said driver section, said
backrest pod having a mounting aperture in its outer end;
(c) an exterior fabric covering;
(d) synthetic resin cushioning material therebetween,
substantially encapsulating said backrest pod, said fabric covering and
cushioning material having openings therein aligned with said pod
mounting aperture;
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(e) hinge means along one side of said driver seat section of
said platform member for hingedly mounting said section of said
saddle on the motorcycle frame to pivot about a longitudinal axis;
(f) latch means on the other side of said driver seat section
of said platform member to secure it to the motorcycle frame; and
(g) a backrest assembly having
(i) an elongated rigid support arm having a lower portion
extending through said aligned openings in said fabric covering
and said cushioning material and into said mounting aperture of
said pod;
(ii) a backrest on the upper portion of said support arm,
and
(iii) means releasably securing said support arm in said
pod, whereby said driver section of said saddle can be
unlatched from the frame and pivoted into an open position to
expose underlying elements of the motorcycle with said
backrest assembly retained therein.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Uchida US 3,779,597 Dec. 18, 1973
Hanagan US 5,544,937 Aug. 13, 1996
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Hanagan and Uchida.
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ISSUE
Appellant admits the concept of a pivotable saddle is not new (Br. 6) and
admits that his own prior art patent (Hanagan) discloses a tandem motorcycle
saddle with backrest supporting pods secured to the platform of the saddle (Br. 5).
Appellant contends that he is the first to conceive of combining the two concepts
so that a saddle may be pivoted while having a backrest fully supported thereon in
its erect position (Br. 6). Appellant contends that Uchida contains no teaching or
suggestion to use its pivotable saddle concept with the tandem saddle of Hanagan,
and Hanagan contains no teaching or suggestion to use its tandem saddle with
backrest supporting pods on the pivotable saddle of Uchida (Br. 4-5).
The Examiner found it would have been obvious to one with ordinary skill
in the art to have mounted the platform of Hanagan such that it is hinged, as in
Uchida, to allow access to components and storage underneath the seat (Answer 3).
The Examiner further determined that it would have been obvious to one having
ordinary skill in the art to have provided the hinged, tandem seat of Uchida with
conventional motorcycle backrests, such as taught in Hanagan, to provide added
comfort to the occupant (Answer 3).
The issue before us is whether Appellant has shown that the Examiner erred
in finding sufficient teaching, suggestion, or motivation to combine the teachings
of Hanagan and Uchida such that it would have led one having ordinary skill in the
art at the time of the invention to the claimed invention.

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
Hanagan discloses a backrest 22 that is mounted to a platform member 12 of
a tandem motorcycle seat 10 in such a manner that the backrest 22 is movable from
a driver seat portion 18 to passenger seat portion 20 (Hanagan, col. 1, ll. 43-62).
Hanagan discloses that a locking screw 67 is used to install the backrest 22
in the passenger seat portion 20 of the saddle (Hanagan, Figure 7 and col. 4, l. 66 –
col. 5, l. 7).
Uchida discloses a motorcycle seat 7 that is pivotably attached at one side
thereof by hinge members 6 so that the seat can be raised or lowered to uncover
and cover, respectively, the open portion of a housing section 3 (Uchida, col. 1, ll.
47-51).
Uchida discloses that the housing section 3 can accommodate a tool box 4
and a storage battery 5 (Uchida, col. 1, ll. 45-46).
Uchida discloses that the seat 7 can be lowered and locked, so that a hook
member 14, which is hooking a buckle 13 of an article such as a helmet 12, is
covered by the seat 7 so that the buckle 13 cannot be unhooked and is thus resistant
to theft (Uchida, col. 2, ll. 12-19).
Uchida teaches that the invention allows an article such as a helmet to be
easily hooked on the vehicle body and rendered theft resistant by lowering the seat
(Uchida, col. 2, ll. 56-60).
Uchida further teaches that the seat can also be used for safe storage of
articles housed in the vehicle body (Uchida, col. 2, ll. 63-65).
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PRINCIPLES OF LAW
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.1
In addition to our review of the Graham factors, we also consider “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem facing
the inventor, would have been led to make the combination recited in the claims.”
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006). From
this it may be determined whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the art – i.e., the
understandings and knowledge of persons having ordinary skill in the art at the
time of the invention-support the legal conclusion of obviousness. Id.
To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g.,
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1337-38 (“the teaching, motivation, or

1 Although Graham also suggests analysis of secondary considerations such as
commercial success, long felt but unsolved needs, failure of others, etc., Appellant
presented no such evidence of secondary considerations for the Board’s
consideration.
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suggestion may be implicit from the prior art as a whole, rather than expressly
stated in the references”).
“The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem to be
solved as a whole would have suggested to those of ordinary skill in the art.”
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (quoting In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
[A]n implicit motivation to combine exists not only when
a suggestion may be gleaned from the prior art as a
whole, but when the ‘improvement’ is technology-
independent and the combination of references results in
a product or process that is more desirable for example
because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the
desire to enhance commercial opportunities by improving
a product or process is universal – and even common-
sensical – we have held that there exists in these
situations a motivation to combine prior art references
even absent any hint of suggestion in the references
themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and
skills rendering him capable of combining the prior art
references.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006)
Further, it is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by applicant. See, e.g., Kahn, 441
F.3d at 988, 78 USPQ2d at 1336 (“In considering motivation in the obviousness
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analysis, the problem examined is not the specific problem solved by the invention
but the general problem that confronted the inventor before the invention was
made motivation”) and Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary
skill in the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”).

ANALYSIS
Appellant groups the claims into two groups: claims 1 and 4-8 as a first
group and claims 2 and 3 as a second group (Br. 4). Appellant makes the same
arguments as to both groups of claims and does not argue for the separate
patentability of claims 2 and 3. Appellant merely states (Br. 4) that the second
group of claims is directed to a split saddle. A statement which merely points out
what a claim recites will not be considered an argument for separate patentability
of the claim. 37 C.F.R. § 41.37(c)(1)(vii) (2006). As such, we treat claim 1 as a
representative claim, and the remaining claims 2-8 stand or fall with claim 1.
Appellant does not contest the Examiner’s findings as to the scope and
content of the prior art or the differences between the prior art and the claimed
invention. Rather, Appellant challenges the Examiner’s finding that a person of
ordinary skill in the art would have been motivated to combine the teachings of
Hanagan and Uchida to make the combination recited in the claims.
We find sufficient motivation to combine Hanagan and Uchida in the
teachings of the references themselves. As stated supra, Uchida teaches that by
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using a hinged motorcycle seat, articles hanging from the seat can be secured from
theft and the interior section of the seat can be used for safe storage of articles
housed in the vehicle body. These stated benefits of the hinged seat design of
Uchida would have provided sufficient motivation to one having ordinary skill in
the art to have used this hinged seat on the motorcycle seat of Hanagan. As such,
we agree with the Examiner that it would have been obvious to one having
ordinary skill in the art at the time of the invention to have mounted the seat
platform of Hanagan with hinges, as taught by Uchida, to provide access to
components and storage underneath the seat. Since the backrest of Hanagan is
bolted to the platform of the saddle, if the saddle were hinged, as in Uchida, the
backrest would pivot along with the saddle and remain in its erect position,
resulting in the invention of claim 1.
Appellant cites two exhibits to show conventional backrests mounted on the
motorcycle frame or fender rather than on the platform of the saddle (Br. 5-6).
Appellant describes that such constructions have frequently presented problems
from the standpoint of ease of pivoting of the saddle and of working on the
underlying components (Br. 6). While this may indeed be a disadvantage of these
types of prior art backrests, the backrest of Hanagan does not suffer from this
disadvantage because it is bolted to the saddle instead of the frame or fender.
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Appellant challenges the Examiner’s basis for motivation to combine, taken
from the references themselves, and argues,
[T]he Examiner fails to note that the key feature of the
present invention is the fact that the combination defined
by the appended claims enables the motorcycle user to
maintain the seatbacks in position within the saddle at the
same time as it is being opened and thereafter while he or
she is working on any underlying components (Br. 7).
Appellant appears to be arguing that the motivation to combine the
references must be for the same reason as Appellant. While there must be
motivation to make the claimed invention, there is no requirement that the prior art
provide the same reason as the applicant to make the claimed invention. The
reason or motivation to modify the reference may often suggest what the inventor
has done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same advantage
or result discovered by applicant.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-8 under 35 U.S.C. § 103 as unpatentable over Uchida and
Hanagan.

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DECISION
The decision of the Examiner to reject claims 1-8 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) (2006).

AFFIRMED

vsh

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