Ex parte LARIVIERE

Board of Patent Appeals and Interferences

Jul 15, 1997

08045747 (B.P.A.I. Jul. 15, 1997)

Application for patent filed April 8, 1993. According to1
appellant, the application is a continuation-in-part of Applica-
tion 08/011,610, filed February 1, 1993.
1
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALEXANDER LARIVIERE

_____________
Appeal No. 96-0324
Application 08/045,7471
______________
HEARD: June 5, 1997
_______________
Before STONER, Chief Administrative Patent Judge, and HAIRSTON
and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-0324
Application 08/045,747
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1 through 16 and 18, which are all of
the claims remaining in this application. Claim 17 has been
canceled.
Appellant's invention relates to an improvement in a
"springer fork" for a bicycle and, more particularly, to a kit
including such an improved fork which is used for safely
converting a standard bicycle having a springer fork to a "low
rider" style bicycle with a modified springer fork. According to
appellant's specification (pages 1-2), "[m]aking a low rider
involves giving the bicycle a longer and lower look" wherein it
is the specially bent fork "that principally contributes the
longer and lower look that defines a low rider." As noted in
the paragraph bridging pages 3 and 4 of the specification one
very popular type of fork for low riders is the "springer fork,"
which was originally made by Schwinn. It is also indicated
that
[t]o convert the springer fork to a low rider
fork, the common practice is to bend the fork
Appeal No. 96-0324
Application 08/045,747
3
by heating it with a torch, and then send it
out to be plated. The result is an unsafe
fork that may collapse, a bicycle frame that
is lowered to the point that the pedals may
hit the ground, and a high price when the
cost of bending and plating is included.
Appellant's improvement over the prior art springer
fork is set forth and briefly explained in the specification at
page 4, line 29 through page 5, line 14, as follows:
In accordance with the present invention,
the low rider springer fork is made by
bending a 26 inch fork to make a 20 inch
curved fork. The bending is done cold, that
is, without heating the fork and without
damaging the chrome plating. The fork is
bent into a smooth curve having about a six
inch bending radius. The bend is slightly
less than a ninety degree bend, and is in the
range of about 70 degrees to about 80
degrees.
Struts that are normally a part of the
springer fork are shortened to accommodate
the change from a 26 inch fork to a 20 inch
curved fork. This bend gives the appearance
of a low rider without bringing the pedals
closer to the ground. No re-chroming is
necessary, and there is no buckling of metal.
The low rider springer fork is used with a
standard 20 inch wheel and a standard 20 inch
fender. A threaded fastener is affixed to
the bottom of the steer tube for fastening
the fender. A long screw may be passed
through a hole in the fender and into the
threaded fastener in the bottom of the steer
Appeal No. 96-0324
Application 08/045,747
4
tube. An angulated washer may be used to
accommodate the curvature of the fender to
the head of the screw. A two inch section of
hollow chrome tubing may be used to hide the
screw threads.
Claims 1, 7 and 18 are representative of the subject
matter on appeal and a copy of those claims, as reproduced from
the Appendix attached to appellant's brief, is appended to this
decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Clark 1,995,796 Mar. 26, 1935
Schwinn 2,160,034 May 30, 1939
Moulton 3,208,767 Sept. 28, 1965
Smith 4,037,855 July 26, 1977
Georgiev 4,480,848 Nov. 6, 1984
Isaac 4,565,383 Jan. 21, 1986
Fuller 5,165,712 Nov. 24, 1992
Claims 1, 2, 7 and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Smith.
Claims 3 through 6 and 9 through 16 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Smith in view
of Clark, Isaac and Fuller.
Appeal No. 96-0324
Application 08/045,747
5
Claims 1 through 6 stand additionally rejected under
35 U.S.C. § 103 as being unpatentable over Smith in view of
Georgiev, Moulton, Clark and Isaac.
Claims 7 through 16 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Smith in view of
Georgiev, Moulton, Clark and Isaac as applied to claims 1-6
above, and further in view of Schwinn.
Reference is made to the examiner's answer (Paper
No. 11, mailed January 24, 1995) for the examiner's complete
reasoning in support of the above-noted rejections. Appellant's
arguments thereagainst are found in the brief (Paper No. 10,
filed November 1, 1994) and in the reply brief (Paper No. 13,
filed March 23, 1995).
OPINION
In reaching our conclusions on the issues raised in
this appeal, we have carefully considered appellant's
specification and claims, the applied prior art references and
the respective viewpoints advanced by appellant and the examiner.
Appeal No. 96-0324
Application 08/045,747
6
As a consequence of our review, we have made the determination
that the examiner's respective rejections of claims 1 through 16
and 18 under 35 U.S.C. § 102 and § 103 will not be sustained.
Our reasons follow. In addition, pursuant to our authority under
37 CFR § 1.196(b), we have also decided to enter a new rejection
of appealed claims 7 and 8 under 35 U.S.C. §§ 102(b)/103 based
on the Schwinn patent which is of record in the application.
Like appellant (brief, pages 6-8), in reviewing the
examiner's rejection of claims 1, 2, 7 and 8 under 35 U.S.C.
§ 102(b) based on Smith, we note that Smith clearly does not
include "tubular furcations" as required in independent claims 1
and 7. The examiner's position (answer, page 9) that "[b]ecause
the disclosure of Smith is silent as to element 17, Smith is
capable of having a tubular configuration," and that appellant's
Jepson-format claim 1 "attests to the conventionality of tubular
furcations . . ." is of no moment given that the rejection under
review is based on anticipation under 35 U.S.C. § 102(b) and
not obviousness under 35 U.S.C. § 103. An anticipation under
35 U.S.C. § 102(b) is established only when a single prior art
reference discloses, either expressly or under principles of
Appeal No. 96-0324
Application 08/045,747
7
inherency, each and every element of a claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
As a further point, we note, as appellant has, that
Smith also does not include a teaching or disclosure of the
"struts" set forth in claim 1, and clearly does not have the bend
that extends the furcations in a forward direction "located in
the lower half of said furcations" as set forth in dependent
claims 2 and 8 on appeal.
With further regard to independent claim 1, we must
agree with appellant that there is no disclosure whatsoever in
Smith of providing a bend in the lower limbs of the furcations of
a bicycle fork that extends said furcations in a forward
direction and "converts a long fork to a twenty inch fork," as
set forth in the claim. Based on appellant's disclosure, it is
clear that this limitation requires a long fork (i.e., a 26 inch
springer fork) that is subsequently provided with a bend at a
location in the lower limbs of the furcations to thereby convert
Appeal No. 96-0324
Application 08/045,747
8
said long fork into a 20 inch curved fork that is usable on a
stock 20 inch bicycle frame with 20 inch wheels on the front
and rear, and which provides the illusion of a longer and lower,
low-rider look, but maintains the same standard safe ground
clearance of the frame and the pedals as existed before the
specially bent fork was added thereto. Note particularly,
page 4, lines 6-10, lines 17-19 and lines 29-30; page 5,
lines 3-6; page 8, lines 15-20; and page 11, lines 10-12 of
appellant's specification. Given that there is no disclosure in
Smith which addresses the structural limitation of claim 1
concerning converting a long fork to a twenty inch fork, we fail
to see how Smith can be said to anticipate the invention as
defined in appellant's claim 1 on appeal.
With further regard to independent claim 7, we are in
agreement with appellant's argument on pages 6-7 of the brief
that the term "springer fork" is a standard term in the bicycle
art which would be recognized by one of ordinary skill in the art
as identifying the type of fork assembly shown generally in
appellant's Figure 6 and in the Schwinn patent cited and applied
Appeal No. 96-0324
Application 08/045,747
9
by the examiner, and not as being susceptible to a broad
construction that would be readable on the simple shock absorbing
bicycle front end seen in Smith. Appellant's own specification
(at page 3, lines 29-31) supports the argued construction of the
term "springer fork" by indicating that the "springer fork" was
originally made by Schwinn and that other manufacturers are
presently manufacturing a replica of the Schwinn springer fork.
Given the art-recognized understanding of what constitutes a
"springer fork," it is clear that Smith does not teach or
disclose such a structure and cannot be said to anticipate under
35 U.S.C. § 102(b) the "springer fork low rider kit" defined in
appellant's claim 7 on appeal.
In accordance with the foregoing, the examiner's
rejection of claims 1, 2, 7 and 8 under 35 U.S.C. § 102(b) based
on Smith will not be sustained.
As for the rejection of claims 3 through 6 and 9
through 16 under 35 U.S.C. § 103 as being unpatentable over Smith
in view of Clark, Isaac and Fuller, we have carefully reviewed
the teachings of Clark, Isaac and Fuller, however, we find
Appeal No. 96-0324
Application 08/045,747
10
nothing therein which can be said to provide for the deficiencies
of the primary reference to Smith as noted above in our
discussion of the examiner's rejection of claims 1, 2, 7 and 8.
That is, even if the Smith patent were modified in the manner
urged by the examiner on pages 4-5 of the examiner's answer (a)
to include a dropout feature with a built-in washer and raised
lips, (b) to make the fork of "high strength material," and (c)
to have a threaded fastener affixed to the steer tube for
fastening a fender, the result would not be the subject matter as
defined in appellant's claims 1 through 6 and 7 through 16 on
appeal.
Accordingly, the examiner's rejection of these claims under
35 U.S.C. § 103 will not be sustained.
Turning to the examiner's rejection of claims 1
through 6 under 35 U.S.C. § 103 based on Smith in view of
Georgiev, Moulton, Clark and Isaac, and that of claims 7
through 16 and 18 based on Smith in view of Georgiev, Moulton,
Clark and Isaac as applied to claims 1-6 above, and further in
view of Schwinn, we do not share the examiner's view that it
Appeal No. 96-0324
Application 08/045,747
11
would have been obvious, absent any reasonable suggestion or
incentive recognized in the art, to merely provide the bicycle
of Smith with wheels of different sizes and, more particularly,
to provide the bicycle of Smith with 20 inch wheels. This
determination stems from our earlier determination that Smith
fails to teach or suggest the structural limitation of
appellant's claim 1 concerning converting "a long fork to a
twenty inch fork" and thereby providing the illusion of a longer
and lower, low-rider look, while maintaining the same standard
safe ground clearance of the frame and the pedals as existed
before the specially bent fork was added thereto. None of the
additionally applied references addresses or suggests such a
conversion either. We also again mention the other above-noted
shortcomings
of Smith with regard to the lack of "tubular furcations" and
"struts" therein, which deficiencies have not been addressed by
the examiner.
As for the examiner's proposal to alter the simple
shock absorbing front end of the bicycle in Smith to be a
Appeal No. 96-0324
Application 08/045,747
12
"springer fork" arrangement of the type seen in Schwinn, we share
appellant's view (brief, page 32) that such a total
reconstruction of the front fork assembly and steer post of
Smith, along with the other modifications proposed by the
examiner in her rejection, is based on the hindsight benefit
provided by appellant's own application disclosure and not on any
teaching, suggestion or incentive provided by the references
themselves. Thus, we will not sustain the examiner's rejection of
claims 1 through 6 under 35 U.S.C. § 103 based on Smith in view
of Georgiev, Moulton, Clark and Isaac, or that of claims 7
through 16 and 18 under 35 U.S.C. § 103 based on Smith in view
of Georgiev, Moulton, Clark and Isaac as applied to claims 1-6
above, and further in view of Schwinn.
In accordance with our authority under 37 CFR
§ 1.196 (b), we enter the following new rejection of claims 7
and 8 under 35 U.S.C. §§ 102(b)/103.
Claims 7 and 8 are rejected under 35 U.S.C. §§ 102(b)/103 as
being anticipated by Schwinn, or in the alternative as being
obvious over Schwinn when considered in light of appellant's
Appeal No. 96-0324
Application 08/045,747
13
disclosure (pages 3-4) of the "common practice" involved in
converting a springer fork to a low rider fork.
The only arguable difference between the springer fork
kit for a bicycle seen in Schwinn (e.g., Figures 2 through 7) and
that defined in appellant's claims 7 and 8 on appeal is the
recitation that the kit is a "low rider" kit. From appellant's
disclosure and the language of independent claim 7, we understand
this limitation to require that the bicycle be provided with a
longer and lower look, and that this appearance be the result of
said lower limbs of the front fork furcations "having a bend that
extends said furcations in a forward direction." In our opinion,
the depiction of the bicycle in Figures 5 and 7 of Schwinn meets
the broadly recited requirements of a "low rider." That is, the
bicycle seen in these figures has a longer and lower look, and
that appearance is at least in-part the result of said front fork
furcations having a bend in the lower half of said furcations
that extends said furcations in a forward direction. Thus, we
consider that the fork of the Schwinn patent (e.g., Fig. 7)
anticipates the broadly defined "springer fork low rider kit" of
appellant's claims 7 and 8 on appeal.
Appeal No. 96-0324
Application 08/045,747
14
Moreover, even if it were to be determined that the
springer fork arrangement of Schwinn is not anticipatory of the
"low rider" kit set forth in appellant's claims 7 and 8 on
appeal, we consider that based on the added disclosure in
appellant's specification concerning the "common practice" in the
art involved in converting a springer fork to a low rider fork,
it would have been obvious to one of ordinary skill in the art at
the time of appellant's invention to modify the springer fork
seen in the Schwinn patent to be a "low rider" style fork by
additionally bending the lower furcations of the Schwinn front
fork at the location of the already existing bend in the lower
half of the furcations thereof. We recognize that appellant
would consider this modification of the springer fork of Schwinn
to be "unsafe" due to the fact that the front fork might be
weakened by the heating needed to achieve the bending, but we
note that, in our opinion, such a modified springer fork would
nonetheless be a "low rider" springer fork as broadly recited in
appellant's claims 7 and 8. In this regard, we further note that
claims 7 and 8 do not specify a degree of bending, or the amount
Appeal No. 96-0324
Application 08/045,747
15
by which the bend extends the furcations in the forward
direction. Thus, even a relatively small amount of bend that
gives the bicycle of Schwinn a "longer and lower look" would
appear to fall within the metes and bounds of the "low rider" kit
as defined in these claims on appeal.
We have considered appellant's arguments in the brief
and the reply brief as they may apply to the new grounds of
rejection above, however, for the reasons advanced in those new
grounds of rejection we remain of the view that the claimed
subject matter as set forth in claims 7 and 8 on appeal is
anticipated by Schwinn, or would have been obvious to the person
of ordinary skill in the art based on Schwinn and the applied
acknowledged prior art teachings.
In summary, the decisions of the examiner rejecting
claims 1, 2, 7 and 8 under 35 U.S.C. § 102(b) based on Smith and
rejecting claims 1 through 16 and 18 under 35 U.S.C. § 103
relying on Smith as the primary reference are reversed. However,
as provided for in 37 CFR § 1.196(b), a new rejection of appealed
Appeal No. 96-0324
Application 08/045,747
16
claims 7 and 8 under 35 U.S.C. §§ 102(b)/103 has been entered by
this panel of the Board.
Appeal No. 96-0324
Application 08/045,747
17
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
of the decision (37 CFR § 1.197). Should appellant elect to have
further prosecution before the examiner in response to the new
rejection under 37 CFR § 1.196(b) by way of amendment or showing
of facts, or both, not previously of record, a shortened
statutory period for making such response is hereby set to expire
two months from the date of this decision.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).

REVERSED, 37 CFR 1.196(b)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 96-0324
Application 08/045,747
18
CHARLES E. FRANKFORT )
Administrative Patent Judge )
LaRiviere, Grubman & Payne
Two Harris Court
Suite A2
Monterey, CA 93940
Appeal No. 96-0324
Application 08/045,747
- A1 -
APPENDED CLAIMS
1. An improvement in a bicycle fork having a steer
tube, a spring assembly fixed to said steer tube, tubular fur-
cations fixed to said spring assembly, said furcations having a
wall thickness and having lower limbs, and struts extending away
from said spring assembly, said improvement comprising:
said lower limbs of said furcations having a bend that
extends said furcations in a forward direction and converts a
long fork to a twenty inch fork.
7. A springer fork low rider kit for a bicycle having
a frame, handlebars mounted to said frame, and having a front
wheel, said low rider kit comprising:
a springer fork mounted to said handlebars and fastened
to said front wheel, said fork having a steer tube, a spring
assembly fixed to said steer tube, tubular furcations fixed to
said spring assembly, said furcations having a wall thickness and
having lower limbs;
said lower limbs of said furcations having a bend that
extends said furcations in a forward direction.
18. A low-rider springer fork comprising:
a steer tube having an upper portion and a lower
portion;
a spring assembly including a yoke, a generally
L-shaped member having an opening through which passes the upper
portion of said steer tube, a helical spring captured between
said yoke and said L-shaped member, a flexible annular member, an
elongated fastener extending longitudinally through said yoke,
said flexible annular member and said helical spring for com-
pressing said flexible member against said yoke;
a first furcation fastened to a first distal end of
said yoke;
Appeal No. 96-0324
Application 08/045,747
- A2 -
a second furcation fastened to a second distal end of
said yoke;
a first strut fastened to said first distal end of said
yoke;
a second strut fastened to said second distal end of
said yoke;
a rigid attachment member securing the lower portion of
said steer tube to a mid portion of said furcations;
the lower limbs of said furcations having a bend that
extends said furcations in a forward direction, said bend having
a bending radius of substantially six inches, said bend making an
angle between said furcations and said steer tube in the range of
between seventy and eighty degrees, the distal end of said struts
generally coinciding with the distal end of said furcations.