Ex parte Nelson

Board of Patent Appeals and Interferences

Aug 31, 2001

08959964 (B.P.A.I. Aug. 31, 2001)

1
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not written for publication and is not binding precedent of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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL DAMIAN NELSON
__________
Appeal No. 2001-0206
Application 08/959,964
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Paul Damian Nelson originally took this appeal from the
final rejection of claims 1 through 7, 10, 12, 18, 20, 22, 24
through 26, 32 and 33. As the appellant has since canceled
claim 26, the appeal now involves only claims 1 through 7, 10,
12, 18, 20, 22, 24, 25, 32 and 33, all of the claims currently
pending in the application.
THE INVENTION
The invention relates to “a bicycle seat for high
performance bicycle riding, such as time trialing and other
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Application 08/959,964
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bicycle racing” (specification, page 1). Representative claim
1 reads as follows:
1. A cycle seat for a bicycle, including:
an inclined surface forming abutment means for receiving
a portion of a rider’s anatomy which is adjacent at least one
of the rider’s ischial bones, the abutment means being
dimensioned to receive only the portion of the rider’s anatomy
adjacent the ischial bone(s) so that the rider’s soft tissue
or muscle substantially outside the ischial bone(s) is not
compressed or squeezed by the seat when the rider is on the
seat; and
support means coupled to said abutment means for
supporting the abutment means and for coupling the seat to the
bicycle so that the abutment means is permanently transverse
with respect to the longitudinal axis of the bicycle when the
support means couples the seat to the bicycle so that without
other support, it is not possible to permanently sit on the
inclined surface with the backbone of the rider arranged
generally vertically.
THE PRIOR ART
The references relied on by the examiner as evidence of
anticipation are:
Martin 4,108,462 Aug. 22,
1978
Barker et al. (Barker) 4,387,925 Jun. 14,
1983
THE REJECTIONS
Claims 1 through 7, 10, 12, 18, 20, 22, 24, 25, 32 and 33
stand rejected under 35 U.S.C. § 112, second paragraph, as
Appeal No. 2001-0206
Application 08/959,964
Since the examiner (see the advisory action dated1
February 14, 2000, Paper No. 23) has vacated the supplemental
answer mailed August 10, 1999 (Paper No. 21), we have not
considered the arguments advanced therein in deciding the
appeal.
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failing to particularly point out and distinctly claim the
subject matter the appellant regards as the invention.
Claims 1 through 7, 10, 12, 18, 20, 22, 24, 25, 32 and 33
stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Barker.
Claims 32 and 33 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Martin.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 17 and 20) and to the examiner’s answer
(Paper No. 19) for the respective positions of the appellant
and the examiner with regard to the merits of these
rejections.1
DISCUSSION
I. The 35 U.S.C. § 112, second paragraph, rejection
The explanation of this rejection (see pages 3, 4, 6 and
7 in the answer) indicates that the examiner considers claims
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Application 08/959,964
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1 through 7, 10, 12, 18, 20, 22, 24, 25, 32 and 33 to be
indefinite because they include numerous functional or
operational limitations which define a bicycle seat relative
to the anatomy of the user which, in the examiner’s view,
constitutes a non-claimed variable standard.
The examiner’s position here is not well founded.
There is nothing intrinsically wrong with using
functional (or operational) language in a claim to define
something by what it does rather than by what it is. In re
Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In
re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA
1971). Thus, the mere fact that the appellant’s claims
contain functional or operational language which defines the
bicycle seat in terms of the anatomy of a user does not render
the claims indefinite.
The examiner’s observation that the anatomy of a user, at
least to the extent recited in the appealed claims, may vary
from person to person is well taken and is acknowledged by the
appellant (see, for example, page 9 in the specification). As
for the definiteness issue raised by this circumstance, the
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second paragraph of 35 U.S.C. § 112 requires claims to set out
and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In determining whether
this standard is met, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id. Thus,
depending on the facts involved, claims that refer to a
standard that is variable may or may not be definite.
Compare, for example, Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986)
and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Int.
1989)). The disclosure in the instant application indicates
that the inventive essence of the appellant’s bicycle seat
lies in its relationship to certain parts of a user’s anatomy,
with clear distinctions being drawn between such relationship
and those embodied by prior art bicycle seats. Thus, the
appellant’s claims would appear to be as accurate as the
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Application 08/959,964
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particular subject matter permits. In this light, they do set
out and circumscribe the subject matter with a reasonable
degree of precision and particularity.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claims 1 through 7, 10,
12, 18, 20, 22, 24, 25, 32 and 33.
II. The 35 U.S.C. § 102(b) rejection based on Barker
Barker discloses a bicycle seat 9 comprising two support
portions 10 and 11 “shaped to conform generally to the human
anatomy in the buttock and upper leg region” (column 2, lines
35 through 37). A horizontal mounting member 15, which is
affixed to the bicycle via a frame 16 and a clamp 31, carries
the support
portions 10 and 11 at selected lateral positions with a
limited degree of free rotation (see Figure 3) that enables
unobstructed pedaling motion. As for the specific shape of
the support portions, Barker teaches that
[t]he surface configuration is of particular
importance to this invention in that the shape has
been derived so that the weight of the rider is
distributed uniformly over the entire surface of
support portions 10 and 11. This particular shape
eliminates any high pressure points which could
cause either long or short term rider discomfort.
Thus, the bicycle seat not only eliminates undue
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pressure to the sub scrotal area by providing two
split support portions but, by providing the
particular and critical shape of the surface area of
the support portions 10 and 11, eliminates any other
areas of high pressure which could cause discomfort.
The typical single support surface bicycle seat
in use today provides approximately 27 square inches
of support surface for the rider. My improved
bicycle seat preferably provides approximately 22
square inches of support per each support portion 10
and 11, for a total of 44 square inches of support.
However, this fact alone will not, in itself,
provide the increased comfort desired. In order to
make efficient use of the increased support area the
surface must be shaped so that the weight of the
rider is uniformly distributed over the entire
surface. For maximum comfort the ratio between the
highest pressure and the lowest pressure should be
as small as possible.
In order to obtain the proper surface shape for
support portions 10 and 11 it is necessary to
conform the shapes as much as possible to the shape
of the human skeleton in the region of the ischium
and upper femur, the bones which are actually
supported by the seat [column 3, lines 33 through
62].
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Although independent claims 1, 2, 10, 18, 20, 22, 32 and
33 vary in scope, they all in effect require a bicycle seat
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Application 08/959,964
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having an abutment surface or means which receives or is
dimensioned to receive or support only the portion of a
rider’s anatomy adjacent the ischial bones while not engaging,
compressing and/or squeezing any surrounding tissue or muscle.
Barker does not expressly disclose such a seat. The
examiner’s apparent position that Barker’s seat is inherently
capable of functioning in accordance with the claims is unduly
speculative and, in any event, is not on point. Although the
claim limitations at issue are cast in functional or
operational terms, they nonetheless define the structure,
e.g., the dimensions, of the seat. Barker simply does not
disclose such a seat, either expressly or under principles of
inherency. Indeed, Barker’s teaching that the seat disclosed
therein provides a support area which is much larger and more
uniformly weight-bearing than the typical bicycle seat is
inconsonant with the above noted limitations in the
appellant’s claims.
Thus, we shall not sustain the standing 35 U.S.C. §
102(b) rejection of independent claims 1, 2, 10, 18, 20, 22,
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32 and 33 and dependent claims 3 through 7, 12, 24 and 25 as
being anticipated by Barker.
III. The 35 U.S.C. § 102(b) rejection based on Martin
Martin discloses an adjustably-mounted bicycle seat 40
comprising a rectangular base 42, padding 44 and a covering
46. In short, Martin’s disclosure of this seat suffers the
same deficiencies with respect to the limitations in claims 32
and 33 as does Barker’s disclosure.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claims 32 and 33 as being anticipated
by Martin.
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SUMMARY
Since none of the examiner’s rejections is sustained, the
decision of the examiner to reject claims 1 through 7, 10, 12,
18, 20, 22, 24, 25, 32 and 33 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0206
Application 08/959,964
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