Ex parte DUNN

Board of Patent Appeals and Interferences

Feb 25, 1998

08329840 (B.P.A.I. Feb. 25, 1998)

Application for patent filed October 27, 1994. 1
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTOPHER J. DUNN
____________
Appeal No. 97-2722
Application No. 08/329,8401
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge and
COHEN 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 through 7, which are all of the claims
pending in this application.
Appeal No. 97-2722
Application No. 08/329,840
We REVERSE and enter new rejections pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-2722 Page 3
Application No. 08/329,840
In determining the teachings of Laiti, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
The examiner referred to this as a French patent having3
a date of December 1941. Only copies of Figures 1-3 have been
provided and relied upon by the examiner. The appellant has
not challenged that this reference is prior art to their
BACKGROUND
The appellant's invention relates to a combined rack and
storage device for a bicycle. A copy of claims 1 through 7 is
attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Edmonds 702,292 June 10,
1902
Silverman 2,713,845 July
26, 1955
Zopfi 3,578,027 May 11,
1971
Shockley 4,295,586 Oct. 20,
1981
Bass et al. (Bass) 4,760,943 Aug. 2,
1988
Dworman et al. (Dworman) 4,878,867 Nov.
7, 1989
Laiti 2,681,039 Mar. 12, 19932
(France)
112,5043
Appeal No. 97-2722 Page 4
Application No. 08/329,840
invention.
Claims 1, 2, 4 and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Shockley in view of Edmonds and
Laiti.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Shockley in view of Edmonds and Laiti as
applied to claims 1 and 2 above, and further in view of the
French reference 112,504, Zopfi, Dworman, and Silverman.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shockley in view of Edmonds, Laiti,
the French reference 112,504, Zopfi, Dworman, and Silverman as
applied to claims 1 and 4 above, and further in view of Bass.
Claims 1, 2, 4 and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over the French reference 112,504 in
view of Edmonds and Laiti.
Appeal No. 97-2722 Page 5
Application No. 08/329,840
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the French reference 112,504 in view of
Edmonds and Laiti as applied to claims 1 and 2 above, and
further in view of Zopfi, Dworman, and Silverman.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the French reference 112,504 in view
of Edmonds, Laiti, Zopfi, Dworman, and Silverman as applied to
claims 1 and 4 above, and further in view of Bass.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the § 103
rejections, we make reference to the examiner's answer (Paper
No. 12, mailed October 9, 1996) and the supplemental
examiner's answer (Paper No. 14, mailed February 18, 1997) for
the examiner's complete reasoning in support of the
rejections, and to the appellant's brief (Paper No. 11, filed
June 6, 1996) and reply brief (Paper No. 13, filed December 9,
1996) for the appellant's arguments thereagainst.
OPINION
Appeal No. 97-2722 Page 6
Application No. 08/329,840
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
not sufficient to establish a prima facie case of obviousness
with respect to any of the claims on appeal. Accordingly, we
will not sustain the examiner's rejection of claims 1 through
7 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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
Appeal No. 97-2722 Page 7
Application No. 08/329,840
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior
Appeal No. 97-2722 Page 8
Application No. 08/329,840
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
Claim 1, the only independent claim on appeal, recites a
combined rack and storage device for a bicycle comprising,
inter alia, an elongated hollow body having a front end and a
rear open end, clamp means at the front end of the body for
attaching the device to the bicycle seat post so that the body
is cantilevered therefrom in substantially a horizontal
position, closure means at the rear open end for forming a
closed but accessible storage compartment, and frame means
attached to the body and extending outwardly therefrom for
supporting and carrying items.
The examiner determined (answer, pp. 3 and 5) that both
primary references (i.e., Shockley and the French reference
112,504) disclose a combined rack and storage device for a
bicycle but that each lack means for attaching their hollow
body to the seat post in a cantilevered manner. The examiner
then concluded that it would have been obvious to modify the
Appeal No. 97-2722 Page 9
Application No. 08/329,840
The applied prior art is Shockley, Edmonds, Laiti, the4
French reference 112,504, Zopfi, Dworman, Silverman, and Bass.
combined rack and storage device of each primary reference to
be cantilevered since such is well known as shown by Edmonds
and Laiti.
We agree with the appellant's argument that there is
nothing in the applied prior art which would have suggested4
modifying the rack and storage device of either primary
reference to be cantilevered. While the references to Edmonds
and Laiti each disclose a cantilevered rack and storage
device, we see no motivation, absent impermissible hindsight,
for one skilled in the art to have modified the rack and
storage device of either primary reference to arrive at the
claimed invention. Accordingly, we do not sustain any of the
examiner's rejections of claims 1 through 7 under 35 U.S.C. §
103.
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
Appeal No. 97-2722 Page 10
Application No. 08/329,840
Claims 1 and 2 are rejected under 35 U.S.C. § 103 as
being unpatentable over Laiti in view of Shockley.
Laiti discloses a device for affixing a rear luggage rack
to a bicycle. As shown in Figure 1, the device includes a
tube 2 which slides on the seat pillar 1 and a supporting arm
3 for the luggage rack. The tube 2 is provided with a
clamping system 4 to arrest translational and rotational
movements of the tube 2 and supporting arm 3. The supporting
arm 3 may be made of a tube, a shaped metal, or plastic and
may be glued or soldered to the tube 2. Laiti teaches that
the device may carry any type of luggage rack (not shown)
which may be made of a metal wire or cloth. Lastly, Laiti's
device utilizes only a single anchoring point on the seat
pillar (i.e., the support arm 3 is cantilevered from the seat
pillar 1 in substantially a horizontal position) to eliminate
the drawbacks of the prior art wherein the luggage rack is
supported near the wheel axle of the rear wheel.
Shockley discloses a receptacle support apparatus for a
bicycle. As shown in Figures 1-4, the support apparatus 17
Appeal No. 97-2722 Page 11
Application No. 08/329,840
includes a hollow housing 18, a clamp bar 24, a supporting rod
structure 43-45, and struts 27. The hollow housing 18 has a
rear end portion covered by a door 19 hinged to the housing 18
by pins 20. Shockley teaches at column 2, lines 1-5, that the
hollow housing is provided to store articles.
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).
Based on our analysis and review of Laiti and claim 1, it
is our opinion that the only difference is the limitation that
a closure means is provided at the rear open end of the hollow
body for forming a closed but accessible storage compartment.
With regard to this difference, we have determined that
it would have been obvious to one of ordinary skill in the art
at the time of the appellant's invention to have provided
Laiti's tubular supporting arm with a door thereon as
suggested and taught by Shockley whereby the tubular
Appeal No. 97-2722 Page 12
Application No. 08/329,840
supporting arm may store articles therein as taught by
Shockley.
Based on our analysis and review of Laiti and claim 2, it
is our opinion that one additional difference is the
limitation that the hollow body is made of rigid, metal
material.
With regard to this additional difference, we have
determined that it would have been obvious to one of ordinary
skill in the art at the time of the appellant's invention to
have made Laiti's tubular supporting arm from a rigid, metal
material as suggested by Laiti's teaching that the supporting
arm 3 may be a shaped metal and may be soldered to the tube 2.
Claims 4 through 6 are rejected under 35 U.S.C. § 103 as
being unpatentable over Laiti in view of Shockley as applied
to claim 1 above, and further in view of Bass.
Appeal No. 97-2722 Page 13
Application No. 08/329,840
Based on our analysis and review of Laiti and claims 4
through 6, it is our opinion that while Laiti does teach a
luggage rack (i.e., frame means) Laiti does not teach any of
the limitations thereof recited in claims 4 through 6.
Bass discloses a platform 10 supported on a rear carrier
rack 20 of a bicycle. As shown in Figure 2(b), the rear
carrier rack (i.e., frame means) includes tubular members
(i.e., rod material) formed in a generally rectangular shape
with parallel sides 28 and an integral, generally U-shaped
forward portion 30 interconnecting the sides 28 that slopes
upwardly to provide a stop means for externally carried items.
U-shaped members 32 and 34 are affixed to the sides 28 and
provide two strut members between the sides 28. As shown in
Figure 1, the platform 10 is attached horizontally between the
sides 28 of the carrier rack.
With regard to the additional differences recited in
claims 4 through 6, we have determined that it would have been
obvious to one of ordinary skill in the art at the time of the
appellant's invention to have affixed a carrier rack and
Appeal No. 97-2722 Page 14
Application No. 08/329,840
platform as taught by Bass onto Laiti's tubular supporting arm
3 as suggested by Laiti's teaching that his device may carry
any type of luggage rack.
Claim 7 is rejected under 35 U.S.C. § 103 as being
unpatentable over Laiti in view of Shockley as applied to
claim 1 above, and further in view of Edmonds.
Based on our analysis and review of Laiti and claim 7, it
is our opinion that while Laiti does teach a clamping system 4
Laiti does not teach any of the limitations thereof recited in
claim 7.
Edmonds discloses a bicycle package carrier. As shown in
Figures 1 and 2, the bicycle package carrier includes a semi-
circular flange a'' having lateral ears a''' and a semi-
circular clamping-piece B having a lateral ear b'. The
clamping-piece B is hinged at b to the semi-circular flange
a'' and lateral ear b' of the clamping-piece B may be closed
against one ear a''' and secured thereto by means of a screw c
and thumb-nuts c'. This provides a simple and effective means
Appeal No. 97-2722 Page 15
Application No. 08/329,840
See page 1, lines 13-16 and 46-59, of Edmonds.5
to readily attach the carrier to the stem H of the bicycle
frame.5
With regard to this additional difference, we have
determined that it would have been obvious to one of ordinary
skill in the art at the time of the appellant's invention to
have replaced Laiti's clamping system with the alternative
clamping system as suggested and taught by Edmonds to provide
a simple and effective means to readily attach/detach Laiti's
device to the seat pillar of the bicycle frame.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 7 under 35 U.S.C. § 103 is reversed and a new
rejection of claims 1, 2 and 4 through 7 under 35 U.S.C. § 103
has been added pursuant to provisions of 37 CFR § 1.196(b).
Appeal No. 97-2722 Page 16
Application No. 08/329,840
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-2722 Page 17
Application No. 08/329,840
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2722 Page 18
Application No. 08/329,840
ROGER W ERICKSON
OWEN WICKERSHAM & ERICKSON
455 MARKET STREET 19TH FLOOR
SAN FRANCISCO, CA 94105
Appeal No. 97-2722
Application No. 08/329,840
Page 1
APPENDIX
1. A combined rack and storage device for a bicycle
having a seat post, comprising:
- an elongated hollow body having a front end and a
rear open end; said body having clamp means at said front end
that is closeable for attaching said device to said bicycle
seat post so that said body is cantilevered therefrom in
substantially a horizontal position, and closure means at
said rear open end for forming a closed but accessible storage
compartment;
- frame means attached to said body and extending
outwardly therefrom for supporting and carrying items that are
too large to fit within said body compartment.
2. The device of claim 1 wherein said hollow body
has a cylindrical shape and is made of rigid, metal material.
3. The device of claim 2 wherein said closure means
comprises a plug portion of yieldable material which forms an
interference fit with the open end of said body and an outer
flange member fixed to one side of said plug portion and
having an outer reflective surface.
4. The device of claim 1 wherein said frame means
comprises metal rod material formed in a generally rectangular
shape with side portions located parallel to and spaced from
Appeal No. 97-2722
Application No. 08/329,840
Page 2
opposite sides of said body, and strut members fixed to said
side portions and said body for retaining said frame means in
place on said body.
5. The device of claim 4 wherein said frame means
includes an integral, generally U-shaped forward portion
interconnecting said side portions that slopes upwardly from
said body to provide a stop means for externally carried
items.
6. The device of claim 4 including an internal plate
member attached horizontally to the top of said body member
and centered between said frame side portions.
7. The device of claim 1 wherein said clamp means
comprises a pair of semi-cylindrical, flexible jaws, said jaws
having outer flanges, and adjustable fastening means extending
through said flanges.
APPEAL NO. 97-2722 - JUDGE NASE
APPLICATION NO. 08/329,840
APJ NASE
APJ COHEN
APJ McCANDLISH
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 20 Feb 98
FINAL TYPED: