Ex parte EDWARDS

Board of Patent Appeals and Interferences

Jun 18, 1998

08157688 (B.P.A.I. Jun. 18, 1998)

Application for patent filed November 24, 1993.1
After final rejection, the claims were amended by an amendment filed on 2
August 3, 1995 (Paper No. 10).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CRAIG H. EDWARDS
_____________
Appeal No. 96-4136
Application 08/157,6881
______________
ON BRIEF
_______________
Before CALVERT, McQUADE and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 5,
all of the claims in the application.2
Claims 1 and 2 are illustrative of the subject matter in
issue:
Appeal No. 96-4136
Application 08/157,688
2
1. A bicycle fork and handlebar stem assembly including a
stem mounting device, comprising:
a fork tube, a portion of which has a cylindrical
inner surface, said fork tube portion comprising
means for allowing said fork tube portion to be
displaced perpendicular to its axis;
a handlebar stem having a hollow portion defining
an inner wall which fits around said fork tube
portion; and
an expanding means which fits within said
cylindrical inner surface of said fork tube
portion and, when operated, expands laterally of
said fork tube and displaces said fork tube
portion laterally against said inner wall of said
handlebar stem hollow portion.
2. A bicycle fork and handlebar stem assembly as in
claim 1, wherein said means for allowing said fork tube
to be displaced perpendicular to its axis comprises at
least one longitudinal slot formed in said fork tube
portion.
The references applied by the examiner in the final
rejection are:
Leaycraft 667,232 Feb. 05, 1901
Schneider 5,201,243 Apr. 13, 1993
(Filed Jun. 10, 1992)
Edwards 5,251,494 Oct. 12, 1993
(Filed Sep. 18, 1992)
The claims stand finally rejected as follows:
(1) Claims 1 and 3, anticipated by Schneider, under 35
U.S.C. § 102(e).
Appeal No. 96-4136
Application 08/157,688
3
(2) Claims 2, 4 and 5, unpatentable over Leaycraft in view
of Edwards, under 35 U.S.C. § 103.
Before considering these rejections, we note that one of the
issues specified and argued by appellant in his brief is
the "premature and improper imposition of a Final Rejection"
(page 4). However, as pointed out by the examiner on page 9 of
the answer, this is a matter which is petitionable, not
appealable, and this Board has no jurisdiction to consider it.
MPEP § 706.07(c); Ex parte Jackson, 1926 C.D. 102, 104 (Comr.
1924).
Rejection(1)
The basis of this rejection is set forth on page 4 of the
examiner's answer. The crux of the question involved here is
whether Schneider discloses a fork tube 85 (Fig. 5) which
"compris[es] means for allowing said fork tube portion to be
displaced perpendicular to its axis" and an "expanding means
which . . ., when operated, . . . displaces said fork tube
portion laterally against said inner wall of said handlebar stem
hollow portion", as called for by claim 1.
Appeal No. 96-4136
Application 08/157,688
4
In discussing the operation of the stem attachment shown in
Fig. 5, Schneider states at col. 9, lines 27 to 38 (emphasis
added):
To attach the handlebar stem to the bicycle, the inner
core 84 and outer core 87 are slipped over the fork
pipe 85, and the handlebar stem is lowered until the
bearings housing's 89 race of the cone 79, is seated on
the bearings 89. The bolt 91 is then tightened,
thereby drawing up the wedge nut 93 against the
interior diameter of the inner core 84 and causing the
interior diameter of the inner core 84 not only to
expand, but to rise slightly, clamping the core 83 to
the fork pipe 85. The inner core 84 is slit on its
sides, preferably symmetrically at two or four
locations, at its lower end to facilitate its expansion
in the clamping mode.
Schneider does not expressly disclose any displacement of the
fork tube 85 perpendicular to its axis, i.e., laterally, but this
is not conclusive on the issue of anticipation, since a reference
may still anticipate a claim limitation if that limitation is
inherently disclosed. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); Verdegaal Bros., Inc. v.
Union Oil Co. of Calif., 814 F.2d 628, 633, 2 USPQ 1051, 1054,
(Fed. Cir), cert. denied, 484 U.S. 827 (1987).
The examiner finds in effect that when the interior diameter
of Schneider's inner core 84 is expanded, as disclosed (supra),
Appeal No. 96-4136
Application 08/157,688
Since Schneider discloses that core 84 is preferably made of brass3
(col. 9, line 2), it would seem that any expansion of fork tube 85 would be
particularly small.
5
the fork tube 85 will inherently be laterally displaced because
the core 84 bears against its inner surface. As the examiner
states on page 7 of the answer, he considers "the ability of the
material [of the fork tube] to expand when loaded to be the means
for allowing said fork tube portion to be displaced perpendicular
to its axis".
We agree with the examiner that when the inner core 84 of
Schneider is expanded, as disclosed, it would appear that its
pressure against the inner wall of the fork tube 85 would
inherently cause some expansion of the latter. However, since
any such expansion would be on a microscopic scale, we do not
consider that it would meet the quoted limitation of claim 1.3
It is fundamental that the claims of a pending application
will be given their broadest reasonable interpretation consistent
with the specification. In re Prater, 415 F.2d 1393, 1404, 162
USPQ 541, 550 (CCPA 1969). In the present case, taking into
account the fact that appellant's disclosed means for allowing
the fork tube to be laterally displaced constitutes slots 23 in
Appeal No. 96-4136
Application 08/157,688
6
the fork (Fig. 3), we conclude that one of ordinary skill in the
art would not interpret the claimed "means for allowing" as
including apparatus such as that disclosed by Schneider in which
the fork tube is not modified for the purpose of allowing any
expansion, and the only expansion of the fork tube would be
extremely small. We do not regard the examiner's interpretation
of claim 1 as a reasonable one, under the circumstances.
Accordingly, the rejection of claim 1, and of claim 3
dependent thereon, will not be sustained.
Rejection(2)
The basis of this rejection is stated on pages 5 and 6 of
the examiner's answer. In essence, the examiner takes the
position that in view of Edwards' disclosure that wedge nuts and
core nuts are equivalent structures known in the art for attach-
ing together the stem and fork tube of a bicycle, it would have
been obvious to one of ordinary skill in the art to substitute
the wedge nut 36 fixing means of Edwards (Fig. 3) for the wedge-
shaped expansion member 7 of Leaycraft, which, upon tightening of
nut 11, moves upwardly within the slotted upper end of fork tube
3 to expand the tube outward into engagement with the inner wall
of handlebar stem 5 (page 1, lines 38 to 46).
Appeal No. 96-4136
Application 08/157,688
7
We note that the Edwards reference is appellant's own
patent, and was issued less than one year prior to the filing
date of the instant application. It therefore does not qualify
as prior art as to appellant under 35 USC § 102(a), (b) or (e).
In the absence of Edwards, there is no basis for the examiner's
holding that the claimed subject matter would have been obvious,
and the rejection under 35 USC § 103 will not be sustained.
Conclusion
The examiner's decision to reject claims 1 to 5 is reversed.
Reversed
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-4136
Application 08/157,688
8
Don A. Hollingsworth
Ladas & Parry
5670 Wilshire Boulevard
Suite 2100
Los Angeles, CA 90036-5679