Ex Parte Segato

Patent Trial and Appeal Board

Dec 9, 2013

11577754 (P.T.A.B. Dec. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/577,754 04/23/2007 Stefano Segato 374-56 7909
24336 7590 12/10/2013
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
BARFIELD, ANTHONY DERRELL
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
12/10/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEFANO SEGATO
____________

Appeal 2012-001261
Application 11/577,754
Technology Center 3600
____________

Before MEREDITH C. PETRAVICK, GAY ANN SPAHN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-16, 22, and 23.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 The Examiner withdrew the rejection as to method claims 17-21. Ans. 3.
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Application 11/577,754

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Claimed Subject Matter
The claimed subject matter generally relates to “a shape-memory
saddle structure” for a pedal driven vehicle, such as a bicycle, which “saddle
structure . . . can increase user comfort, especially at the inside thigh areas.”
Spec. 1, ll. 6-7, 13, and Spec. 3, ll. 19-20. Claim 1 (the sole independent
claim on appeal), reproduced below, with emphasis added, is representative
of the appealed subject matter.
1. A shape-memory saddle, comprising:
a support frame having an upper face, and one or more
deformable portions defining areas of the support frame
configured to be more susceptible to deformation than the rest
of the support frame, said deformable portions comprising
at least one membrane of fibrous material; and
at least one layer of elastomeric material joined to the
membrane, wherein said membrane has a predetermined
starting configuration, said fibrous material of the membrane
being deformable in response to a user-exerted force to take a
final deformed configuration, and said elastomeric material is
adapted to elastically hold said membrane in said deformed
configuration to provide shape-memory properties.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1-6 and 8-16 under 35 U.S.C. § 102(b) as anticipated by
Bigolin (US 2003/0164629 A1, published Sep. 4, 2003); and
II. claims 7, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable
over Bigolin.

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Application 11/577,754

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OPINION
Rejection I – Anticipation based on Bigolin
The Examiner finds that Bigolin anticipates independent claim 1 by
disclosing a shape-memory saddle 1 including, inter alia, “a . . . frame (2)
having . . . one or more differently deformable portions (11ʹ, 11ʺ) comprising
at least one membrane (8) of fibrous material . . . [and] at least one layer of
elastomeric material (9).” Ans. 4 (citing Bigolin, para. [0045]).
Appellant argues that the Examiner’s reliance on Bigolin, to disclose
deformable portions comprised of both a membrane of fibrous material and a
layer of elastomeric material joined to the membrane, is misplaced. Br. 8.
More particularly, Appellant argues that while Bigolin’s paragraph [0045]
“describes the moulding and fixing of the various layers (8) and (9)” and
Bigolin also discloses “the arranging of such layers of varying rigidity [a]s
shown in its FIG. 3, . . . the layering of (8) and (9) is provided only in
regions which are NOT to have any deformability at all.” Br. 9. In other
words, Appellant argues that “in Bigolin, any areas of the support structure
[i.e., frame (2),] which are to be ‘elastically yielding’ are created by
covering an opening [(11)] with only a single layer (9) which consists of a
lower-rigidity material,” or alternatively, covering the opening 11 by a first
layer 8 consisting of high rigidity material. Id (citing Bigolin, paras. [0028]-
[0029]). Consequently, Appellant argues that:
Bigolin does not teach at least a deformable portion (which are
defined as areas of a support frame configured to be more
susceptible to deformation than the rest of the support frame),
said deformable portions comprising a multi-layer structure

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Application 11/577,754

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(i.e., at least one membrane of fibrous material, joined to at
least one layer of elastic material), essentially as now claimed
in Claim 1.
Br. 11.
The Examiner responds by directing Appellant’s attention to Bigolin’s
disclosure “that deformable portion (11) may comprise one or more portions
(11ʹ, 11ʺ) and which may have [any one of] the membrane (8) of fibrous
material (Fig. 2), the elastomeric (9) material (Fig. 3) [and] a combination of
both [fibrous membrane (8) and elastomeric layer (9)] (Fig. 4) covering the
deformable portions (see para [0031-0032]).” Ans. 5. The Examiner also
directs Appellant’s attention to Bigolin’s Figures 3 and 4 and paragraphs
[0031]-[0033], wherein the Examiner states Bigolin discloses that “the
elastically yielding may have a form comprising two rear lobes 11ʺ located
in the ischiatic zones[] . . . , the elastomeric layer (9) disposed between first
fibrous layers (8).” Ans. 6. The Examiner acknowledges that claim 1
defines deformable portions “as areas of the support structure which are
more susceptible to deformation than the rest of the support frame.” Id. The
Examiner’s “position [is] that not only the central ‘elastically yielding
zone[,]’ but the peripheral and rear ischiatic zones are more susceptible to
deformation tha[n] the rest of the support frame (for example the nose
portion).” Id.
Bigolin discloses a saddle 1 for a bicycle made of composite material.
Bigolin, Title, Abstr., and paras. [0020]-[0021]. The saddle 1 includes a
rigid or semi-rigid frame or support structure 2, which “is formed by means
of one or more first layers 8 consisting of high-rigidity composite material
and by means of a second layer 9 consisting of lower-rigidity composite
material which is fixed to the first layer 8 along a superimposed surface 10.”
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Bigolin, paras. [0022] and [0027]. In the preferred embodiment, the frame
or “support structure 2 is composed of a plurality of first layers 8 each
provided with an opening 11 located substantially in a central zone of the
saddle 1,” wherein the “opening 11 is covered only by the second lower-
rigidity layer [9] with relatively high elasticity,” and “an elastically yielding
zone is defined in the region of this opening 11.” Bigolin, para. [0028]. In
an alternative, unillustrated embodiment, “the opening 11 [is covered] with a
first layer 8 instead of a second layer 9 with less rigidity since the elastic
effect can be associated with this zone may in any case be obtained owing to
the smaller number of layers of composite material.” Bigolin, para. [0029].
We see nothing in Bigolin’s paragraphs [0031]-[0033] and Figures 3
and 4, relied on by the Examiner, to support the finding that Bigolin’s
deformable portions or “elastically yielding zones” may have “a
combination of both [fibrous membrane (8) and elastomeric layer (9)] (Fig.
4) covering the deformable portions.” See Ans. 5. Bigolin’s paragraph
[0031] merely indicates that the opening 11 in each of the plurality of first
layers 8 (best shown in Figure 1) includes two rear lobes 11ʹ, located in the
ischiatic2 zones of seat 7 of saddle 1, and a central lobe 11ʺ, located in the

2 Ordinary and customary meanings of: (1) the adjective “ischiatic” is
“ischial”; (2) the adjective “ischial” is “of, relating to, or situated near the
ischium”; and (3) the noun “ischium” is “the dorsal and posterior of the three
principal bones composing either half of the pelvis consisting in man of a
thick portion, a large rough eminence on which the body rests when sitting,
and a forwardly directed ramus which joins that of the pubis.” Webster’s
Third New International Dictionary, Unabridged, Merriam-Webster,
Incorporated, copyright 1993, accessed at http://lionreference.chadwyck.com
(last visited: December 2, 2013).
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Application 11/577,754

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prostatic3 zone of seat 7 of saddle 1. Bigolin’s paragraph [0032] merely
indicates that the first layers 8 become progressively smaller in outer
dimension layer-by-layer so that the support structure 2 is thinner along its
peripheral edge. Bigolin’s paragraph [0033] merely indicates that there is an
overlap of first and second layers 8 and 9 radially outwardly of the periphery
of opening 11. Bigolin’s Figures 3 and 4 merely illustrate that the opening
11 in each of the first layers 8 is only covered by second layer 9.
Moreover, with respect to the Examiner’s position that “peripheral
and rear ischiatic zones are more susceptible to deformation tha[n] the
rest of the support frame” (Ans. 6), we note that the Examiner has not
pointed to any disclosure in Bigolin that supports this position, nor are we
able to find any disclosure in Bigolin to support this position. As such, this
appears to be mere conjecture on the Examiner’s part.
Based on the foregoing, we are persuaded by Appellant’s arguments.
In particular, as Bigolin’s paragraphs [0028] and [0029] disclose a
deformable portion in the form of an elastically yielding zone defined in the
region of opening 11 in each of the first layers 8, with the opening 11 either
covered by the second layer 9 in the illustrated embodiment of Figures 3 and
4 or covered by the first layer 8 in the alternative, unillustrated embodiment,
we agree with Appellant that Bigolin fails to satisfy claim 1’s language of

3 Ordinary and customary meanings of: (1) the adjective “prostatic” is “of or
relating to or being the prostate gland”; and (2) the term “prostate gland” is
“a pale firm partly muscular partly glandular body that surrounds the base of
the male urethra in man and other mammals and discharges its viscid
opalescent secretion through ducts opening into the floor of the urethra.”
Webster’s Third New International Dictionary, Unabridged, Merriam-
Webster, Incorporated, copyright 1993, accessed at
http://lionreference.chadwyck.com (last visited: December 2, 2013).
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Application 11/577,754

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“deformable portions comprising at least one membrane of fibrous material[]
and at least one layer of elastomeric material joined to the membrane.” The
only portions of Bigolin where the first and second layers 8 and 9 are joined
is radially outwardly of the periphery of opening 11 as shown in Figures 3
and 4, and Bigolin does not disclose that these portions where the first and
second layers 8 and 9 are joined to be elastically yielding zones, i.e.,
deformable portions.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2-6 and 8-16 dependent thereon, under
35 U.S.C. § 102(b) as anticipated by Bigolin.

Rejection II – Obviousness based on Bigolin
Claims 7, 22, and 23 all depend indirectly from independent claim 1.
Br., Clms. App’x. The Examiner’s rejection of claims 7, 22, and 23 relies
on the erroneous finding that Bigolin discloses “deformable portions
comprising at least one membrane of fibrous material[] and at least one layer
of elastomeric material joined to the membrane.” For the same reasons as
discussed supra with respect to the rejection of independent claim 1 as
anticipated by Bigolin, we do not sustain the Examiner’s rejection of claims
7, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Bigolin.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-16, 22, and
23.
REVERSED
Klh