Ex parte Moser et al.

Board of Patent Appeals and Interferences

Aug 11, 2000

08591801 (B.P.A.I. Aug. 11, 2000)

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for publication in a law journal and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS V. MOSER et al.
____________
Appeal No. 1998-2838
Application No. 08/591,801
____________
ON BRIEF
____________
Before CALVERT, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 5, 6, 10-14 and 17-20. Claims 3, 4,
7-9, 15 and 16 have been objected to as depending from a non-
allowed claim. No claim has been canceled.
We REVERSE.
Appeal No. 1998-2838 Page 2
Application No. 08/591,801
Appeal No. 1998-2838 Page 3
Application No. 08/591,801
We note that the word "identical" was misspelled in1
claims 1 and 13.
BACKGROUND
The appellants' invention relates to bicycles for
exercise and/or therapeutic purposes (specification, p. 1). A
substantially correct copy of the claims under appeal is set
forth in the appendix to the appellants' brief. 1
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Lin 4,705,493 Nov. 10,
1987
Pitzen et al. 4,923,193 May 8,
1990
(Pitzen)
Taylor 5,496,238 March 5,
1996
(filed Aug. 19, 1993)
Claims 1, 2, 5, 6, 13, 14 and 17-20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Taylor in view of
Lin.
Appeal No. 1998-2838 Page 4
Application No. 08/591,801
Claims 10-12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Taylor in view of Lin, as applied
above, and further in view of Pitzen.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 9,
mailed January 21, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 8,
filed October 24, 1997) and reply brief (Paper No. 10, filed
March 17, 1998) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
Appeal No. 1998-2838 Page 5
Application No. 08/591,801
not sustain the examiner's rejection of claims 1, 2, 5, 6, 10-
14 and 17-20 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue that the applied prior art does not
establish a prima facie case of obviousness. Specifically,
the appellants assert that the claimed control means as
recited in the independent claims on appeal (i.e., claims 1
and 13) is not suggested by the applied prior art. We agree.
Appeal No. 1998-2838 Page 6
Application No. 08/591,801
Column 14, lines 34-39, of Taylor provide "If found2
(continued...)
Independent claim 1 includes the recitation of "control
means for providing isokinetic pedaling resistance throughout
the cycle of rotation of said pedals." Independent claim 13
includes the recitation of "control means for providing
isotonic pedaling resistance throughout the cycle of rotation
of said pedals." However, these limitations are not suggested
by the applied prior art for the reasons set forth in the
appellants' brief (pp. 5-7) and reply brief (pp. 2-6). In
that regard, Taylor does not teach or suggest a control means
for providing isotonic or isokinetic pedaling resistance
throughout the cycle of rotation of the pedals. To the
contrary, Taylor teaches that his physical conditioning
apparatus includes a resistance producing means for resisting
upward movement of the foot pedals but producing little or no
resistance to downward movement of the foot pedals.
It is our opinion that the examiner's determination
(answer, p. 5) that Taylor's teachings at column 14, lines 34-
39, clearly suggest the upward and downward pedal movement2
Appeal No. 1998-2838 Page 7
Application No. 08/591,801
(...continued)2
desirable or necessary, stop means may be provided to so limit
the relative angular movements of manual control knobs 308,
308', respectively, that the resistance to the upward movement
of pedals 264, 266 is always greater than the resistance to
the downward movement of pedals 264, 266."
resistances can be identical is in error. This passage of
Taylor clearly teaches that the resistance to the upward
movement of pedals 264, 266 is always greater than the
resistance to the downward movement of pedals 264, 266 even
when stop means are provided to limit the relative angular
movements of manual control knobs 308, 308'.
Furthermore, the examiner made determinations (answer,
pp. 4-5) that Lin discloses (1) an exercise device which
utilizes an isokinetic resistance mechanism, and (2) friction
wheels, i.e., flywheels having adjustable braking bands. We
have reviewed fully the disclosure of Lin and fail to find any
support whatsoever for these determinations of the examiner.
In fact, Lin does not disclose any resistance or braking
mechanism for his exercise device.
Appeal No. 1998-2838 Page 8
Application No. 08/591,801
We have also reviewed the reference to Pitzen3
additionally applied in the rejection of claims 10-12 but find
nothing therein which makes up for the deficiencies of Taylor
and Lin discussed above.
In our view, the only suggestion for modifying Taylor to
meet the above-noted limitations stems from hindsight
knowledge derived from the appellants' own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It follows that we
cannot sustain the examiner's rejections of claims 1, 2, 5, 6,
10-14 and 17-20. 3
CONCLUSION
Appeal No. 1998-2838 Page 9
Application No. 08/591,801
To summarize, the decision of the examiner to reject
claims 1, 2, 5, 6, 10-14 and 17-20 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1998-2838 Page 10
Application No. 08/591,801
WILLIAM B. RITCHIE
43 JACKSON STREET
CONCORD, NH 03301
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JVN/ks