Ex Parte Milanowski

Board of Patent Appeals and Interferences

Sep 27, 2005

10417458 (B.P.A.I. Sep. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TODD MILANOWSKI
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Appeal No. 2005-2182
Application No. 10/417,458
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ON BRIEF
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Before PAK, WARREN, 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 1-3, 5-9, 11-13 and 15-19, which are all of
the claims pending in this application.
BACKGROUND
Appellant's invention relates to a bicycle pedal assembly.
An understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced below.
1. A bicycle pedal assembly for use on a bicycle, said
bicycle pedal assembly comprising:
a crank arm;
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Application No. 10/417,458
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a clipless bicycle pedal rotatably supported by said crank
arm, said pedal including engagement structure engageable with a
shoe having complementary structure for fixing the shoe to the
pedal to pedal the bicycle;
a pedal adapter including first and second portions
sandwiching said clipless bicycle pedal therebetween and covering
at least a portion of said engagement structure to eliminate the
need for the shoe having the complementary structure, each of
said first and second portions including at least one engagement
surface engageable with a shoe not having the complementary
structure to pedal the bicycle regardless of the rotation
orientation of said clipless bicycle pedal.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Chae 5,398,570 Mar. 21, 1995
Nagano 5,806,379 Sep. 15, 1998
Paris 6,339,972 Jan. 22, 2002
Claims 1-3, 5, 7-9, 11-13, 15 and 17-19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nagano in view of
Chae. Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nagano in view of Paris.
We refer to the brief, reply brief, the answer and the final
rejection for a complete exposition of the opposing viewpoints
expressed by appellant and the examiner concerning the issues
before us on this appeal.
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Application No. 10/417,458
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OPINION
Upon careful review of the respective positions advanced by
appellant and the examiner with respect to the rejections that
are before us for review, we find ourselves in agreement with
appellant’s viewpoint in that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472,
223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will not
sustain the examiner’s rejections.
Nagano is directed to a bicycle pedal system having variable
pedal surfaces. For example, a first pedal surface may include a
cleat engaging device (4, Fig. 1) for engaging a cleat present on
the shoe of an operator. An adapter (5, Fig. 1) is furnished
that includes a tread surface (12, Fig. 1) for an ordinary shoe
without cleats. The adapter (5) of Nagano covers one of the
major surfaces of the pedal as depicted in drawing Figure 2.
The examiner (final rejection, page 2) acknowledges that
Nagano does not disclose the claimed structure including a pedal
adapter comprising a first portion and a second portion that
sandwich a clipless bicycle pedal therebetween, wherein each of
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Application No. 10/417,458
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said portions include at least one engagement surface engageable
with a shoe not having the complementary structure to pedal the
bicycle.
In attempting to establish the obviousness of appellant’s
bicycle pedal adapter or bicycle assembly, including such an
adapter, the examiner proposes modifying the bicycle pedal
assembly of Nagano based on the teachings of Chae with respect
to a vehicle pedal supplementary device. In this regard, the
examiner notes that Chae teaches a pedal sandwiched between first
and second members and asserts that:
it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify
the apparatus of Nagano in view of Chae to include a
hinge mechanism to couple said first portion to said
second portion so as to permanently connect said first
portion to said second portion while allowing for easy
installation of said pedal adapter on a pedal.
As correctly explained by appellant in the briefs, however,
Chae (column 1, lines 6-11 and column 1, line 65 through column
2, line 11) is directed to a supplementary device that includes
an upper pedal piece, a locking plate and a lower support for use
with a vehicle pedal, such as "an automobile, a motorcycle, a
farming machine and the like" to allow for a larger size to
inhibit a foot from slipping off in an emergency. As such, we
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1 The examiner does not offer an explanation as to how Paris
makes up for the acknowledged lack of a teaching of the claimed
pedal adapter first and second portions in Nagano. Nor des the
examiner employ Chae in the separate obviousness rejection of
dependent claims 6 and 16 notwithstanding that Chae was employed
in the obviousness rejection of the independent claims from which
agree with appellants that the examiner as not established how
the disparate teachings of Chae that are directed to a vehicle
pedal device serve to particularly suggest a modification to the
bicycle clipless pedal adapter of Nagano.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellant’s disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Products Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). From
our perspective, the examiner’s proposed combination of Nagano
and Chae appears to be premised on impermissible hindsight
reasoning. Moreover, the examiner has not detailed how Paris,
which is directed to a motorcycle foot peg, as applied in the
obviousness rejection of dependent claims 6 and 16 would make up
for the deficiencies in the teachings of Nagano discussed above.1
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claims 6 and 16 ultimately depend.
Thus, we will not sustain the stated § 103(a) rejections as
advanced by the examiner.
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CONCLUSION
The decision of the examiner to reject claims 1-3, 5, 7-9,
11-13, 15 and 17-19 under 35 U.S.C. § 103(a) as being
unpatentable over Nagano in view of Chae and to reject claim 6
and 16 under 35 U.S.C. § 103(a) as being unpatentable over Nagano
in view of Paris is reversed.
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Charles F. Warren ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Peter F. Kratz )
Administrative Patent Judge )
PFK/cam
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Application No. 10/417,458
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