Ex Parte Hepburn

Board of Patent Appeals and Interferences

Aug 6, 2004

09697647 (B.P.A.I. Aug. 6, 2004)

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publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GRANT HEPBURN
_______
Appeal No. 2004-1701
Application No. 09/697,647
____________
ON BRIEF
____________
Before PAK, WALTZ and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 19-22, 24 and 25, which are all of the claims
pending in this application.
BACKGROUND
Appellant's invention relates to a fuel tank protector for a
motorcycle. An understanding of the invention can be derived
from a reading of exemplary claim 19, which is reproduced below.
19. A motorcycle fuel tank protector comprising a
pair of resilient cover members each of which is shaped
to substantially conform to and bound a respective side
frontal portion of the fuel tank that is prone to stone
chip damage,
each cover member being removably attached to and
spaced from said corresponding side frontal portion in
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Application No. 09/697,647
Page 2
use solely by a plurality of resilient suction
connectors distributed over the inner surface of said
cover member,
each said suction connector including a suction
cup portion releasably engagable with side frontal
portion.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wagner 4,969,674 Nov.13, 1990
Thurm 5,884,380 Mar. 23, 1999
Claims 19-22, 24 and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thurm in view of Wagner.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by appellant and
the examiner concerning the issues before us on this appeal.
OPINION
Upon consideration of the respective positions advanced by
appellant and the examiner with respect to the rejection that is
before us for review, we find ourselves in agreement with
appellant’s position in that the examiner has failed to carry the
burden of establishing a prima facie case of obviousness.
Accordingly, we will not sustain the examiner’s § 103(a)
rejection.
Appeal No. 2004-1701
Application No. 09/697,647
Page 3
While Thurm discloses a motorcycle gas tank cover, the
examiner basically acknowledges that Thurm does not disclose that
the tank protective cover includes a plurality of resilient
suction connectors distributed over the inner surface of each
cover member and that each such connector has a suction cup
portion releasably engageable with a side frontal portion of the
motorcycle fuel tank. Rather, Thurm teaches that the cover
members are secured to the motorcycle with nuts and bolts passing
through flanges connected to the tank cover members. See, e.g.,
column 2, lines 60-67 and drawing figures 5a and 5b of Thurm.
While Wagner does disclose securing a side bumper to a passenger
vehicle side door with a plurality of suction cups (30, figures 2
and 5) in combination with a locking device (32, figures 2 and
6), the examiner has not reasonably explained how the teachings
of using suction cups and a locking device for a side bumper as
taught in Wagner would have led one of ordinary skill in the art
to replace the nut and bolt assembly of Thurm with suction cups
only sold for securing a motorcycle gas tank cover.
In this regard, the examiner has not provided adequate
evidence that suction cup connectors by themselves are
interchangeable with nuts and bolts for securing, solely in use,
covers of the type taught by Thurm to the external surface of a
Appeal No. 2004-1701
Application No. 09/697,647
Page 4
motorcycle gas tank. While suction cups may be well known for
use in attachment of other items to other portions of a different
type of vehicle, such as an automobile as acknowledged by
appellant (4th page of the brief), the examiner has not fairly
explained how those other uses of suction cups would have
reasonably led one of ordinary skill in the art to employ a
plurality of suction cup connectors arranged as here claimed as a
substitute for a nuts and bolt arrangement for holding Thurm’s
motorcycle gas tank covers in place. Moreover, the examiner has
not explained why Wagner, even if considered combinable with
Thurm, would have suggested the here claimed covers, “each of
which is shaped to substantially conform to and bound a
respective side frontal portion of the fuel tank...” and that are
constructed as being solely attachable by a plurality of suction
cup connectors in use. In this regard, Wagner teaches using a
locking device in addition to suction cups for a side door bumper
as noted by appellant and Thurm dislcoses a motorcycle gas tank
cover that generally conforms to the shape of a gas tank, not
shaped to conform to and form a boundary of “a side frontal
portion of the fuel tank” (emphasis added).
The examiner must provide specific reasons or suggestions
for combining the particular teachings and disclosures of the
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Application No. 09/697,647
Page 5
applied references so as to arrive at the claimed subject matter
with a reasonable expectation of success in so doing. In this
context, the examiner's rejection falls short in not identifying
a convincing and particularized suggestion, reason or motivation
to combine the references or make the proposed modification in a
manner so as to arrive at the claimed invention. See In re
Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.
1998).
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view of
the reference evidence.
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Application No. 09/697,647
Page 6
CONCLUSION
The decision of the examiner to reject claims 19-22, 24 and
25 under 35 U.S.C. § 103(a) as being unpatentable over Thurm in
view of Wagner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2004-1701
Application No. 09/697,647
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