Ex Parte Tsuge

Board of Patent Appeals and Interferences

Apr 18, 2003

09576649 (B.P.A.I. Apr. 18, 2003)

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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENJI TSUGE
____________
Appeal No. 2003-0109
Application No. 09/576,649
____________
ON BRIEF
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Before ABRAMS, McQUADE, and NASE, 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 and
14. Claims 3 and 5 to 13 have been withdrawn from consideration. Claim 4 has been
canceled.
We REVERSE.
Appeal No. 2003-0109
Application No. 09/576,649
Page 2
BACKGROUND
The appellant's invention relates to a bicycle seat assembly having a pair of in
line seats, one for pedaling and the other for use by the rider to hold the bicycle in an at
rest position or for mounting and dismounting the bicycle (specification, p. 1). A correct
copy of claim 2 is set forth in the appendix to the appellant's brief. Claims 1 and 14
read as follows:
1. A bicycle seating assembly for alternately seating a rider in a first or
second position on a bicycle having pedals comprising:
first and second seating members, said second seating member being
smaller than said first seating member,
first means for mounting said first seating member in said first position
which is above the bicycle pedals at a distance such that the feet of the bicycle
rider just reach the pedals with the riders legs fully extended, and
second means for mounting said second seating member in said second
position at a distance from the ground to permit at least one of the riders feet to
reach the ground beneath the bicycle,
said first and second seating members being integrated into a unitary
assembly,
whereby in said first position the rider can efficiently pedal the bicycle and
in said second position the rider can readily hold the bicycle at rest.
14. A bicycle seating assembly for alternately seating a rider in a first or
second position on a bicycle having pedals comprising:
first and second seating members, said second seating member being
smaller than said first seating member,
first means for mounting said first seating member in said first position
which is above the bicycle pedals at a distance such that the feet of the bicycle
rider just reach the pedals with the rider's legs fully extended, and
second means for mounting said second seating member in said second
position at a distance from the ground to permit at least one of the rider's feet to
reach the ground beneath the bicycle,
said first and second seating members being integrated into a unitary
assembly,
Appeal No. 2003-0109
Application No. 09/576,649
Page 3
1 In the final rejection, the examiner also rejected claim 14 under 35 U.S.C. § 103 as being
unpatentable over Murrell. The examiner did not repeat the rejection of claim 14 under 35 U.S.C. § 103
as being unpatentable over Murrell in the answer. We assume that this ground of rejection of claim 14
has been withdrawn by the examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
said first and second mounting means comprising a central longitudinal
bar portion, a first vertical bar portion extending from said central portion for
supporting said first seating member, and a second vertical bar portion extending
from said central bar portion for supporting said second seating member, said
first vertical bar portion being substantially longer than said second vertical bar
portion,
whereby in said first position the rider can efficiently pedal the bicycle and
in said second position can readily hold the bicycle at rest.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Murrell 2,550,200 Apr. 24, 1951
Robbin et al. (Robbin) 4,632,453 Dec. 30, 1986
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Murrell.1
Claims 1, 2 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Robbin.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
Appeal No. 2003-0109
Application No. 09/576,649
Page 4
(Paper No. 14, mailed July 2, 2002) for the examiner's complete reasoning in support of
the rejections, and to the brief (Paper No. 13, filed April 12, 2002) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant 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 not sustain the examiner's rejection of
claims 1, 2 and 14 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
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).
Appeal No. 2003-0109
Application No. 09/576,649
Page 5
Murrell's invention relates to an auxiliary seat that is quickly and readily attached
to the usual horizontal bar of a bicycle frame for the purpose of comfortably seating a
second person. As shown in Figures 1-3, a bicycle frame 5 includes a horizontal top
bar 6. The usual bicycle seat 7 is mounted to the frame 5. An auxiliary seat 8 is
mounted to the horizontal top bar 6. The auxiliary seat 8 consists substantially of a
rectangular-shaped board or base plate 9 having a pair of parallel and transversely
disposed metallic strips 10 secured to the underside of the board 9 in any suitable
manner. Welded or otherwise secured at 11 to the center of the strips are a pair of
downwardly curved headers 12 that are adapted to conform to the curvature of the
upper periphery of the horizontal bar 6. Pairs of bolts and nuts 13 and 14 extend
downwardly from the base 9 and respectively through the metallic strips 10 on opposite
sides of the headers 12. The bolts and nuts 13 and 14 are adapted for securing the
arms 15 and 16 of a pair of U-shaped clamps 17 and 18 to the strips 10. The clamps
are adapted to bear on the underside of the horizontal bar so that the clamps and
headers contact substantially the entire periphery of the bar 6 to prevent slipping or
turning of the seat on the frame. For the purpose of making the seat comfortable for an
additional passenger, padding 19 is placed on the upper face of base 9 and a covering
20 placed over the padding is secured to the side and end edges of the base by
suitable fastening means 21.
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Application No. 09/576,649
Page 6
Robbin's invention relates to a system that is attachable to a conventional bicycle
for safely carrying a bicycle passenger, especially a child of preschool age. With
reference to Figure 1, the bicycle includes a horizontal tubular frame member 48 that
extends from the upper end of neck 44 of the bicycle to the vicinity of the primary seat
11. A seat mount assembly 12 is affixed to the horizontal tubular frame member 48.
An auxiliary bicycle seat 56 of conventional design is attached to the seat mount
assembly 12. A footrest assembly 14 is provided so that the passenger, typically a
child of preschool age, will be comfortably supported as he or she rides on auxiliary
seat 56. Harnesses are incorporated into the footrest assembly to secure the child's
feet to the footrest. With reference to Figures 5 and 6, the seat mount assembly 12
comprises a semitubular shaped first clamp member 50 and a semitubular shaped
second clamp member 52 that are placed together to substantially envelop the
circumference of the horizontal tubular frame member 48. Clamp members 50 and 52
are securely held in position by suitable means such as the pair of hose clamps 58.
Projecting upwardly from, and integrally formed with, the first clamp member 50 is a
tubular seat post 54. The diameter of the seat post 54 is of a size to accommodate a
conventional bicycle seat 56 (not shown in Figure 6). The seat mount assembly
provides a quick and convenient method of mounting the conventional seat 56 in a
position where it is least likely to interfere with the pedalling action of the rider.
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Application No. 09/576,649
Page 7
2 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
In the rejection of claims 1 and 2 under 35 U.S.C. § 103 as being unpatentable
over Murrell, the examiner ascertained2 (answer, p. 4) that Murrell disclosed all the
claimed subject matter except for the second seating member being smaller than the
first seating member (i.e., Murrell's auxiliary seat 8 being smaller than primary seat 7).
The examiner then determined that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to design the second seating member (i.e.,
Murrell's auxiliary seat 8) smaller than the first seating member (i.e., Murrell's primary
seat 7).
In the rejection of claims 1, 2 and 14 under 35 U.S.C. § 103 as being
unpatentable over Robbin, the examiner ascertained (answer, pp. 4-5) that Robbin
disclosed all the claimed subject matter except for the second seating member being
smaller than the first seating member (i.e., Robbin's auxiliary seat 56 being smaller than
primary seat 11). The examiner then determined that it would have been obvious to
one of ordinary skill in the art at the time the invention was made to design the second
seating member (i.e.,Robbin's auxiliary seat 56) smaller than the first seating member
(i.e., Robbin's primary seat 11).
Appeal No. 2003-0109
Application No. 09/576,649
Page 8
All the claims under appeal recite a bicycle seating assembly comprising, inter
alia, first and second seating members integrated into a unitary assembly; first means
for mounting the first seating member in the first position which is above the bicycle
pedals at a distance such that the feet of the bicycle rider just reach the pedals with the
riders legs fully extended; and second means for mounting the second seating member
in the second position at a distance from the ground to permit at least one of the riders
feet to reach the ground beneath the bicycle. In the rejections before us, the examiner
asserts that the above-noted limitations are met by Murrell and Robbin. The appellant
argues (brief, pp. 3-8) that the applied prior art does not teach or suggest the above-
noted combination of limitations. We find ourselves in agreement with the appellant on
this point. The claims under appeal are directed to a bicycle seating assembly usable
with a bicycle in which the first and second seating members of the bicycle seating
assembly are integrated into a unitary assembly. While the auxiliary seat and primary
seat of both Murrell and Robbin are integrated into a unitary bicycle, they are not
integrated into a unitary bicycle seating assembly usable with a bicycle as claimed.
Thus, even if (1) the primary seat of either Murrell or Robbin were mounted in a first
position which is above the bicycle pedals at a distance such that the feet of the bicycle
rider just reach the pedals with the riders legs fully extended; (2) the auxiliary seat of
either Murrell or Robbin were mounted in a second position at a distance from the
ground to permit at least one of the riders feet to reach the ground beneath the bicycle;
Appeal No. 2003-0109
Application No. 09/576,649
Page 9
and (3) the auxiliary seat were smaller than the primary seat, the claimed subject matter
would not result.
For the reasons set forth above, the decision of the examiner to reject claims 1,
2 and 14 under 35 U.S.C. § 103 is reversed.
CONCLUSION
Appeal No. 2003-0109
Application No. 09/576,649
Page 10
To summarize, the decision of the examiner to reject claims 1, 2 and 14 under
35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-0109
Application No. 09/576,649
Page 11
EDWARD A. SOKOLSKI
3868 CARSON STREET, 105
TORRANCE, CA 90503
JVN/jg