Ex Parte Bogoslofski et al

Patent Trial and Appeal Board

Apr 25, 2017

14015800 (P.T.A.B. Apr. 25, 2017)

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.
3539.1100003 1015
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
14/015,800 08/30/2013
128845 7590 04/26/2017
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, NW
Washington, DC 20005
Kevin BOGOSLOFSKI
04/26/2017 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 KEVIN BOGOSLOFSKI,
VINCENT A. BOVE, JOHN R. LAVERACK, and
JOHN J. PELOSI
Appeal 2015-006240
Application 14/015,800
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1—4, 6—14, 16—20, and 28, which
constitute all the claims pending in this application. Br. 1. Claims 5 and 15
have been withdrawn. Br. 1. Claims 21—27 have previously been canceled.
App. Br. Title Page. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-006240
Application 14/015,800
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to carriers mountable
to vehicles for transporting sports equipment.” Spec. 12. Claims 1 and 11
are independent claims. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. An anti-sway device for stabilizing a bicycle supported
upon a cradle borne upon an elongate arm of a vehicular
mountable load carrier, said device comprising:
an arm engaging portion and a bicycle engaging portion
configured to abuttingly engage a tube of said bicycle, said arm
engaging portion having a releasable clasp that is operator
transitionable between a clasping configuration in which the
device is secured to an elongate arm of a vehicular mountable
load carrier and an open configuration in which the device is
installable upon and removable away from the arm in a direction
transverse to a longitudinal axis of the elongate arm, and
wherein the bicycle engaging portion is concave shaped to
receive the tube of the bicycle.
THE REJECTION ON APPEAL
Claims 1—4, 6—14, 16—20, and 28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Robins, Current, and Morris.
REFERENCES RELIED ON BY THE EXAMINER
Current
Morris et al. (“Morris”)
Robins et al. (“Robins”)
US 5,305,978
US 6,321,962 B1
US 6,467,664 B2
Apr. 26, 1994
Nov. 27, 2001
Oct. 22, 2002
2
Appeal 2015-006240
Application 14/015,800
ANALYSIS
Although Appellants generally argue claims 1—4, 6—14, 16—20, and 28
together, on occasion, Appellants also differentiate between the limitations
found in independent claims 1 and 11. Br. 4—9. We select claim 1 for
review (see 37 C.F.R. § 41.37(c)(l)(iv)), but we will also address the
difference in limitations found in claim 11 when separately addressed by
Appellants.
As set forth in the Examiner’s Final Office Action, the Examiner
primarily relies on the teachings of Robins, but also identifies those
limitations that “Robins fails to disclose.” Final Act. 3^4. The Examiner
finds such missing limitations are disclosed in the references to Morris and
Current. Final Act. 4—5. For example, the Examiner acknowledges that
Robins fails to disclose “the arm engaging portions having a releasable
clasp” that can transition between a clasping and an open configuration.
Final Act. 3^4. The Examiner initially references Morris for teaching this
limitation, and particularly “arm engaging portion (300) that includes a
releasable clasp (500)” that allows such transitioning. Final Act. 4. The
Examiner also identifies Current as additionally disclosing “an arm engaging
clamp (40) having a releasable clasp (70, 72) that is operator transitionable”
in the manner claimed. Final Act. 4. The Examiner, thus, states that it
would have been obvious “to modify the elongate arm engaging collars of
Robins to include [] the adjustable clamp mechanism disclosed by Current.”
Final Act. 4. The Examiner explains that Morris is used as the motivation
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Appeal 2015-006240
Application 14/015,800
to employ Current’s clasp in the device of Robins.1 Final Act. 4—5; Ans. 9,
10. The Examiner also addresses “the additional advantage of making the
device securable to different size elongate arms” as taught by Current. Final
Act. 5; see also Current Fig. 6; 2:31—33 (“Phantom lines show further
closure of the clamp when used for smaller diameter rods.”). Further, the
Examiner states that the resulting device “would allow the device to be
installable upon and removable away from the arm in a direction transverse
to a longitudinal axis of the elongate arm,” as recited “since the clamps of
Current are arranged in this manner.” Final Act. 5.
Appellants disagree with the Examiner’s rejection and contend that
the Examiner cited to “various unrelated elements” and combines them
“without providing sufficient reasonable basis.” Br. 4. Appellants also
contend, “[t]he Examiner relies on impermissible hindsight” “without any
articulated reason to combine other than” Appellants’ own teachings. Br. 4;
see also Br. 9.
More specifically, Appellants contend that the Examiner “provides no
reason to modify a bicycle rack to have an anti-sway device having
1 To be specific, the Examiner states, “Morris teaches it is known to make
the elongate arm engaging portion of a bicycle carrying device releasable so
that the device can be secured to the [bicycle carrier’s] elongate arm at a
particular location.” Final Act. 4—5 (referencing Morris 4:65—67) (emphasis
added). Thus, “the motivation for modifying the Robins device would be to
allow [Robins’] arm engaging collars to be securely connected at a
particular location on the elongate arm, as taught by Current and supported
by Morris.'” Final Act. 5 (emphasis added); see also Ans. 9 (“the motivation
rests in the Morris reference, which discloses the desirability of using a
clamping device to lock an arm engaging portion of a bicycle carrier in
place”), 10 (Morris “provides the motivation to replace the non-releasable
structure of [Robins] with a releasable clasp.”).
4
Appeal 2015-006240
Application 14/015,800
releasable clasps.”2 Br. 4. However, as indicated supra, the Examiner
specifically referenced Morris for teaching the advantage of being able to
releasably secure the device to the elongate arm “at a particular location.”
Final Act. 5. Robins’ anti-sway device 104 is secured to the carrier’s
elongate arm 24 (see Robins Fig. 8), but Robins fails to teach the further
advantage of a releasable clamp that can be secured “at a particular location”
along the arm as does Morris.3 The Examiner is employing Current’s
“releasable clasp (70, 72)” to achieve such a releasable attachment. Final
Act. 4; see also Ans. 10. Accordingly, we are not persuaded by Appellants’
contention that the Examiner provided “no reason to modify a bicycle rack
to have an anti-sway device having releasable clasps.”
Appellants further contend (regarding the matter of releasable clasps),
“the references provide no rationale outside of the roadmap provided by the
claims and specification of the instant application.” Br. 5; see also Br. 9. In
other words, Appellants contend the Examiner is relying on “impermissible
hindsight” as the basis for this rejection. Br. 5; see also Br. 9. Based on the
Examiner’s stated reasons and rationales discussed above, we agree and are
not persuaded the Examiner’s rationale was “gleaned only” from Appellants’
disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
2 In addressing this point, Appellants replicate a portion of claim 1 and state
“[independent claim 11 recites a substantially similar feature.” Br. 5.
3 Although Robins’ collar 128 of anti-sway device 104 is “typically
configured to fit on support arm 24 tightly,” Robins also discloses that to
prevent collar 128 “from accidentally sliding off’ the arm, an end cap may
be installed on the arm “to prevent passage of the collars.” Robins 8:1—6.
Hence, Robins recognizes that its collars 128 are subject to sliding and
solves the problem by providing an end cap.
5
Appeal 2015-006240
Application 14/015,800
Appellants also address certain deficiencies in Robins and assert,
“Morris does not, however, cure the deficiencies of Robins . . . Br. 6.
However, as indicated supra, Morris teaches that Robins’ anti-sway device
104 can be modified to make the arm engaging portion securable “at a
particular location,” and that, in view of Morris’ “particular location”
teaching, Current’s clasps can be employed. Final Act. 3—5. Accordingly,
we are not persuaded by Appellants’ contention that Morris (in conjunction
with Current) does not “cure the deficiencies of Robins.” Br. 6.
Appellants further contend that Morris’ “anti-sway mechanism is far
different than the anti-sway device of the present application or that of
Robins.” Br. 7. However, as discussed above, the Examiner relies on
Robins, not Morris, for teaching an anti-sway device.4 See Final Act. 3. As
stated above, Morris “provides the motivation to replace the non-releasable
structure of [Robins] with a releasable clasp.” Ans. 10.
Appellants also argue that Morris’s clasp fails to satisfy the limitation
“in which the device is installable upon and removable away from in a
direction transverse to the longitudinal axis of the elongate arm.” Br. 7; see
also Br. 9. However, the Examiner is not relying on Morris for teaching the
recited movement of “in a direction transverse” to the longitudinal extent of
the arm. Instead, the Examiner has specifically stated that the resulting
4 Appellants further contend, “Morris does not disclose any hanging anti­
sway portion that would have a collar on either side of the tray 400.” Br. 7.
This “either side” recitation is directed to a limitation found in independent
claim 11 (“an anti-sway device having a substantially Y-shape with two
upper arms straddling said cradle”). However, as indicated supra, the
Examiner is relying on Robins for this “Y-shape” configuration, not Morris.
Final Act. 3.
6
Appeal 2015-006240
Application 14/015,800
device would allow such transverse movement “since the clamps of Current
are arranged” in such a manner as to permit it.5 Final Act. 5. In any event,
Appellants focus on Morris is not persuasive that the Examiner erred in
relying on Current for teaching this limitation.
Appellants further state that Current “is outside of the bicycle rack
art” and that this “is indicative of the lack of any teaching for an anti-sway
device having a releasable clasp.” Br. 7; see also Br. 8—9. However,
Current was not relied on for any teaching directed to an anti-sway device.
Ans. 10 (“the bicycle rack that is being modified is that of [Robins], which
teaches an anti-sway device”). Instead, Current was relied upon for its
teaching of releasable clamps/clasps that can be secured at a particular
location as taught by Morris.6 Final Act. 4—5. Hence, Appellants do not
explain how Current fails to be pertinent to the particular problem with
which Appellants were concerned.7 See Ans. 12—13 (describing the problem
as being attachment to a cylindrical mount).
5 Current teaches that to open the clamp, upper housing 60 is pivoted “about
hinge 68.” Current 3:33—37. The figures of Current disclose no obstruction
that might prevent upper housing 60 from rotating nearly 180
counterclockwise thereby allowing securement to rod 50 in a transverse
direction. See Current Figs. 1—3, 6.
6 Appellants also state that there is no disclosure “that the singular
compression clamp of Current be employed on both sides of a cradle.” Br.
9. As indicated above, this “both sides” is a reference to a limitation found
in claim 11. Further, the Examiner relied on Robins for this “Y-shape” (and
hence two connectors), not Current. Final Act. 3.
7 The Examiner further notes that “Current is classified in class 248
Supports” which is devoted to “attaching brackets to cylindrical mounts”
and, as such, “is a natural area ... to look for removable clamping means to
replace the attachment structure of Robins.” Final Act. 9; Ans. 10—11.
Appellants, however, contend, “simply being within a particular
7
Appeal 2015-006240
Application 14/015,800
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1—4, 6—14, 16—20, and 28 as being
obvious over Robins, Current, and Morris.
DECISION
The Examiner’s rejection of claims 1—4, 6—14, 16—20, and 28 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
classification for search is insufficient basis to rely on for a determination of
obviousness.” Br. 9. We need not address this “field of endeavor” prong of
the analogous art test (see In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)) in
view of the particular problem of attaching a device to a cylindrical mount
both Current and Appellants address. See, e.g., Spec. Tflf 154, 168, and Fig.
41.
8