Ex Parte Smith III

Board of Patent Appeals and Interferences

Feb 27, 2003

09046797 (B.P.A.I. Feb. 27, 2003)

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for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES T. SMITH, III
____________
Appeal No. 2002-0754
Application No. 09/046,797
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5, 7, 10 through 14, 16 through 19, and 21. Claim 6
stands objected to (Paper No. 19, page 10), and claims 8 and 9
have been withdrawn from consideration as being based upon a non-
Appeal No. 2002-0754
Application 09/046,797
1 A final rejection of claims 1 through 3, 7, 13 through 16,
and 21 under 35 U.S.C. § 103(a) based upon the combination of
Carn and Hoffman references was withdrawn by the examiner
(answer, page 2).
2
elected species. These claims constitute all of the claims
remaining in the application.
Appellant’s invention pertains to an unpowered road luge and
an unpowered road luge used by a reclining rider. A basic
understanding of the invention can be derived from a reading of
exemplary claims 1, 17, and 21, respective copies of which appear
in the APPENDIX to the main brief (Paper No. 21).
As evidence of anticipation and obviousness, the examiner
has applied the documents listed below:
Matsuura 3,913,929 Oct. 21, 1975
Wiener 4,548,421 Oct. 22, 1985
Dean et al 4,592,563 Jun. 3, 1986
(Dean)
Eilers 4,993,733 Feb. 19, 1991
Shoquist 5,785,330 Jul. 28, 1998
The following rejections are before us for review. 1
Appeal No. 2002-0754
Application 09/046,797
3
Claim 1 stands rejected under 35 U.S.C. § 102(b)as being
anticipated by Matsuura.
Claims 1 through 5, 7, 10, 13, 16 through 19, and 21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Eilers in view of Matsuura.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuura in view of Shoquist.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eilers in view of Matsuura, as applied to claim
1 above, further in view of Shoquist.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuura in view of Wiener.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eilers in view of Matsuura, as applied to claim
1 above, further in view of Wiener.
Appeal No. 2002-0754
Application 09/046,797
4
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuura in view of Dean.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eilers in view of Matsuura, as applied to claim
1 above, further in view of Dean.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the answer (Paper
No. 22), while the complete statement of appellants’ argument can
be found in the main and reply briefs (Paper Nos. 21 and 23).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied teachings, and
the respective viewpoints of appellants and the examiner. As a
consequence of our review, we make the determination which
follows.
Appeal No. 2002-0754
Application 09/046,797
5
We cannot sustain any of the rejections on appeal for the
reasons articulated below.
At the outset, it is critically important to recognize that
every one of appellant’s claims requires an “unpowered road
luge”. Read in light of the underlying disclosure, we have no
doubt whatsoever but that one skilled in this art would readily
comprehend that an unpowered luge is one that operates by running
downhill (specification, page 1). In other words, for its
operation the luge itself has no structure for powering it
manually or otherwise (e.g., it lacks pedals and a prime mover
such as a motor or engine). With the above understanding in
mind, we turn now to the examiner’s rejections.
Anticipation
The unpowered road luge defined in Claim 11 is not
anticipated by the low center-of-gravity cycle of Matsuura.
Simply stated, the cycle of Matsuura is provided with pedals for
powered operation by a rider. For the preceding reason, the
anticipation rejection is not sound and cannot be sustained.
Appeal No. 2002-0754
Application 09/046,797
6
Obviousness
The unpowered road luge of claims 1 through 5, 7, 10, 13, 16
through 19, and 21 would not have been obvious based upon the
combined teachings of Eilers and Matsuura. Akin to Matsuura, as
described above, Eilers teaches a three wheel recumbent vehicle
provided with pedals for powered operation by a rider. It
follows that, collectively considered, these teachings would not
have been suggestive of an unpowered road luge, as claimed. It
is for this reason that the obviousness rejection at issue cannot
be sustained.
The unpowered road luge of claims 11, 12, and 14 would not
have been obvious based upon the teaching of Matsuura and the
combination of Eilers and Matsuura, respectively, as discussed
above, further in view of Shoquist, Wiener, and Dean. Simply
stated, each of the latter references fail to overcome the noted
deficiency of the Matsuura reference and the combination of
Eilers and Matsuura. It follows that the respective rejections
of claims 11, 12, and 14 cannot be sustained.
Appeal No. 2002-0754
Application 09/046,797
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REMAND TO THE EXAMINER
We remand this application to the examiner to assess the
patentability of the claimed “unpowered” road luge under
35 U.S.C. § 103 taking into account the combined teachings of the
known directly steerable unpowered road luge (appellant’s
specification, pages 1 and 2) and other relevant known vehicles,
e.g., the Matsuura cycle, Eilers vehicle, and soap-box derby
vehicles.
In summary, this panel of the board has not sustained any of
the rejections on appeal. Additionally, we have remanded the
application for consideration of the matter described above.
Appeal No. 2002-0754
Application 09/046,797
8
The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC:pgg
Appeal No. 2002-0754
Application 09/046,797
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GREGORY O. GARMONG
P.O. BOX 12460
ZEPHYR COVE, NV 89448