Ex Parte Gillis

Board of Patent Appeals and Interferences

Nov 18, 2010

11221077 (B.P.A.I. Nov. 18, 2010)

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.
11/221,077 09/07/2005 Keith Louis Gillis MSH-351 3765
8131 7590 11/18/2010
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
JOHNSON, VICKY A
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
11/18/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEITH LOUIS GILLIS
____________________

Appeal 2009-008626
Application 11/221,077
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008626
Application 11/221,077
2
STATEMENT OF THE CASE
Keith Louis Gillis (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-4 under 35 U.S.C. § 102(b) as being
anticipated by Krizman (US 6,035,741, iss. Mar. 14, 2000). We have
jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The claims are directed to “a handlebar extension that mounts to the
existing openings of the top plate of a standard motorcycle.” Spec. 1:11-12.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A handlebar extension comprising in combination a first
component, a second component and at least two fasteners,
said first component having a near end, a distal end, a top
surface, a bottom surface, a front surface, a rear surface, a near
end surface, a distal end surface, an arcuate opening
therethrough and an arcuate opening inside surface;
said first component having at least two openings
therethrough from the top surface to the bottom surface;
said arcuate opening extending from said front surface to
said rear surface and opening through the bottom surface;
said second component being larger than the first
component and having a near end, a distal end, a top surface, a
bottom surface, a front surface, a rear surface, a near end
surface, a distal end surface, a second arcuate opening and a
second arcuate opening inside surface,
said second component having at least two openings
therethrough that align with the openings in the first component
in an offset manner thereby allowing attachment of handle bars
at a higher elevation and a greater distance from the user; the
top surface of the second component not surmounted by the
first component, having an opening therethrough, which
opening has a counter sunk top portion, said openings being
threaded;
Appeal 2009-008626
Application 11/221,077
3
said second arcuate opening extending from said front
surface to said rear surface and opening into said top surface of
the second component,
said second arcuate opening inside surface having an
opening therethrough extending from the arcuate openings [sic:
opening] inside surface to the bottom surface, such being
counter sunk;
said first component being surmountable on the second
component in a manner that when combined, the two
components form a circular enclosure, said circular enclosure
configured to accept different handlebar sizes and
configurations;
the combination of the first component and the second
component being surmountable to a motorcycle handlebar
support rod.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.

DISCUSSION
Appellant argues that Krizman does not anticipate the subject matter
of claim 1 because:
In the instant claim 1, the applicant has amended the
claims to clearly set forth that the two major components of the
device of this invention are structured such that they are
mountable in an offset manner that is, offset such that they
allow the attachment of handle bars at a higher elevation and a
greater distance from the user than is provided by prior art
devices. This is not taught by Krizman.
App. Br. 13.
We understand Appellant’s argument to be directed to the limitation
“said second component having at least two openings therethrough that align
with the openings in the first component in an offset manner thereby
allowing attachment of handle bars at a higher elevation and a greater
Appeal 2009-008626
Application 11/221,077
4
distance from the user” in claim 1. The Examiner has not addressed the “in
an offset manner” aspect of this limitation at all. Thus, we cannot ascertain
how the Examiner was construing this limitation, or discern where the
Examiner found description in Krizman satisfying this limitation.
As for the functional language “thereby allowing attachment of handle
bars at a higher elevation and a greater distance from the user” that follows
the phrase “in an offset manner,” the Examiner simply states, without further
explanation, “[t]he universal mount of the Krizman, Jr. reference teaches to
add the mount to the existing handlebar clamp (col. 1 lines 38-65), which
would make it at a higher elevation and a great distance from the user.”
Ans. 4. We find no description in Krizman, in column 1, lines 38-65, that
Krizman’s mount allows attachment of handle bars at a higher elevation and
at a greater distance from the user, as called for in claim 1, and it is not
apparent from Krizman’s drawing figures that this would be the case.
For the above reasons, we cannot sustain the Examiner’s rejection of
claim 1, or of claims 2-4 depending from claim 1, as being anticipated by
Krizman. For the reasons explained below in the new ground of rejection,
we are unable to construe the limitation at issue. Accordingly, we enter a
new ground of rejection of claims 1-4 under 35 U.S.C. § 112, second
paragraph, as being indefinite.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we make the
following new ground of rejection:
Claims 1-4 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Appeal 2009-008626
Application 11/221,077
5
Appellant has not, as contended on page 13 of the Appeal Brief
(quoted above), amended claim 1 to clearly set forth that the first and second
components “are structured such that they are mountable in an offset manner
that is, offset such that they allow the attachment of handle bars at a higher
elevation and a greater distance from the user than is provided by prior art
devices.” Rather, the language “in an offset manner thereby allowing
attachment of handle bars at a higher elevation and a greater distance from
the user” immediately follows, and thus appears to be associated with, the
recitation of at least two openings through the second component that align
with the openings in the first component.
In addition to the “at least two openings” of the second component
discussed above, claim 1 further recites that the top surface of the second
component “not surmounted by the first component” has an opening with a
counter sunk top portion. This opening clearly corresponds to the opening
48 with counter sunk portion 50 depicted on the right side of second
component 6 in Appellant’s Figures 1 and 2. Claim 1 additionally recites a
counter sunk opening in the second arcuate opening inside surface of the
second component. This opening clearly corresponds to the opening with
counter sunk portion 52 depicted in Appellant’s Figures 1 and 2.
Consequently, the “at least two openings” in the second component
recited in claim 1 as aligning with the openings in the first component
necessarily correspond to the first and third openings 48 from the left, as
depicted in Appellant’s Figures 1 and 2. These openings are not disclosed in
Appellant’s Specification or drawings as being offset in any manner from
the openings in the first component. Rather, they are perfectly aligned with
the openings 28 of the first component 4, for passage of fasteners 54
therethrough. Figs. 1-3.
Appeal 2009-008626
Application 11/221,077
6
Further, the alignment of the openings corresponding to the claimed
“at least two openings” in the second component with the openings in the
first component, by itself, does not function to cause the handlebar to be
attached at a higher elevation and a greater distance from the user, as called
for in claim 1. The feature of Appellant’s invention which causes the
handlebar to be attached at a higher elevation and a greater distance from the
user, as compared with the traditional mount, is the offset relationship
between the central axes of the arcuate configurations 24, 45 (“arcuate
openings” as recited in claim 1) and the mid-point of the line connecting the
centers of counter sunk openings (48, 52 and 48, 50). This is the case
because the handlebar is mounted through the circular enclosure defined by
the arcuate configurations.
The definiteness of claim language must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232
(CCPA 1971). See also In re Cohn, 438 F.2d 989, 993 (CCPA 1971)
(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as
being indefinite, where the claims were inherently inconsistent with the
description, definitions, and examples appearing in applicant’s
specification).
For the reasons discussed above, we cannot construe the language
“said second component having at least two openings therethrough that align
with the openings in the first component in an offset manner thereby
allowing attachment of handle bars at a higher elevation and a greater
distance from the user” in claim 1 consistently with Appellant’s underlying
disclosure. Consequently, we conclude that claim 1 and claims 2-4, which
Appeal 2009-008626
Application 11/221,077
7
depend from claim 1 and thus incorporate the language in question, are
indefinite.

DECISION
For the above reasons, the Examiner’s decision is reversed. We enter
a new rejection of claims 1-4 pursuant to 37 C.F.R. § 41.50(b).

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Appeal 2009-008626
Application 11/221,077
8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

hh

MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640