Ex Parte Laivins et al

Patent Trial and Appeal Board

May 23, 2013

11416544 (P.T.A.B. May. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH T. LAIVINS and GLEN A. LAIVINS
____________

Appeal 2011-000611
Application 11/416,544
Technology Center 3600
____________

Before NEAL E. ABRAMS, KEN B. BARRETT,
and JOHN W. MORRISON, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Kenneth T. Laivins et al. (Appellants) seek our review under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2011-000611
Application 11/416,544

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THE INVENTION
The claimed invention is directed to pivotal handguard assembly for
shielding the hand of a rider of a vehicle, and to a kit for a handguard
mounting assembly configured to be connected to a vehicle and to a
handshield.
Claims 1, 10 and 14 reproduced below, are illustrative of the subject
matter on appeal.

1. A pivotal hand guard assembly for a vehicle,
the hand guard assembly comprising:
an arm member;
means for shielding a hand of a rider of the
vehicle, the means for shielding pivotally
connected to the arm member at a pivot point, and
configured to move between a first position and a
second position;
a biasing member provided between the arm
member and the means for shielding, and
configured to bias the means for shielding towards
the first position.

10. A kit for a handguard mounting assembly
configured to be connected to a vehicle and further
configured to be connected to a handshield, the kit
comprising:
an arm configured to be pivotally connected
to a handshield;
a biasing member configured to be
connected to the arm and further configured to
interact with the handshield.

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Application 11/416,544

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14. A hand guard assembly comprising:
an arm;
a shield connected to the arm; and
a biasing member disposed between the arm
and the shield and configured to bias the shield
towards a preselected position.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Slawienski US 1,473,326 Nov. 6, 1923

THE REJECTIONS
Claims 1-9 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Slawienski.

OPINION

Claims 1-9 – Section 112, Second Paragraph
The Examiner’s basis for this rejection of indefiniteness is that

the claim element “means for shielding a hand of a rider of the
vehicle” is a means (or step) plus function limitation that
invokes 35 U.S.C. § 112, sixth paragraph. However, the
written description fails to clearly link or associate the
disclosed structure, material or acts to the claimed function such
that one of ordinary skill in the art would recognize what
structure, material or acts perform the claimed function.

Final Rej. 2; Ans. 3.
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Application 11/416,544

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Appellants have responded by arguing that 35 U.S.C. § 112, sixth
paragraph, states that means-plus-function language should “be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof,” and that “the PTO was required by
statute to look to [Applicant’s] specification and construe the ‘means’
language recited . . . as limited to the corresponding structure disclosed in
the specification and equivalents thereof,” citing In re Donaldson Co.1 In
this regard, Appellants point out that the specification identifies the structure
that performs the function of shielding the hand of a rider of the vehicle, for
Figure 1 illustrates a perspective view “of one embodiment” of a handguard
assembly 100, including handshields 110L and 110R mounted on a
handlebar H of a motorbike M, which are, as recited on page 1 of the
Specification, positioned in front of the handlebar H to “protect a rider’s
hands.” Thus, Appellants assert, “the written description clearly links the
disclosed structure (left and right handshields 110L,R) to the claimed
function (shielding a hand of a rider), in a manner recognizable to one of
ordinary skill in the art,” and as such imposes a positional relationship
between the hand of the rider and the shielding device. Br. 11-12; see also
Spec., para. [0014].
On the basis of the arguments advanced by Appellants, we agree that
the Specification sets forth an adequate disclosure showing what is meant by
the means-plus-function language recited in claim 1, and as such clearly
links the disclosed structure to the claimed function such that one of
ordinary skill in the art would recognize what structure performs the claimed
function. We further point out that Appellants have described in the opening

1 16 F.3d 1189, 1193 (Fed. Cir. 1994)(en banc).
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paragraphs of the Specification that the field of the invention is “a pivotable
handguard for a handlebar of a vehicle, such as a motorbike, motorcycle,
motor scooter, bicycle, or all-terrain vehicle” (Spec., para.[0001]), that such
handguards in the form of shield members are known to be mounted on the
handlebars of such vehicles for the purpose of protecting the hands of the
rider from debris, wind and rain (Spec., para. [0002]), and have described in
great detail the construction and operation of the embodiment shown in the
drawings (Spec., para. [0017]-[0028]).
The rejection of independent claim 1 and dependent claims 2-9 as
being indefinite is not sustained.
Claims 1-20 – Anticipation
Slawienski
Slawienski discloses a handlebar-mounted attachment on a
motorcycle for “maintaining the rotatable grip, which controls the fuel
supply or ignition mechanism and the like, in any desired adjusted position.”
Page 1, ll. 12-15. In furtherance of this function, the reference discloses a
lever 23 pivotally mounted on the handlebar by means of a bracket 14 and
having a wheel 24 which is spring-biased to interact with a plurality of
corrugations 11 on the handlebar to hold the rotatable grip in the desired
position. Page 1, l. 92 – Page 2, l. 30. A slidable locking means 26 is
provided on lever 23 to hold the lever such that wheel 24 is out of contact
with the corrugations when desired.
In the Final Rejection, the Examiner found Slawienski’s lever 23 to be
the claimed “means for shielding a hand of the rider,” explaining that “if the
lever 23 is sufficiently spaced apart from the handlebar 2, the hand of the
rider can be positioned below the lever 23 . . . rendering Slawienski’s lever
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23 to be a shield.” Final Rej. 10. (Emphasis added). “Therefore, the lever
23 corresponds to the function recited in the claim.” Id. Appellants argued
in response to this conclusion that “lever 23 . . . is fundamentally different
from the claimed ‘means for shielding a hand of a rider of the vehicle . . . .
Slawienski’s lever cannot function as a means for shielding a hand of a rider
of the vehicle, and does not correspond to the structure identified in the
subject application,” “that lever 23 is positioned between the hand of the
rider and the handlebar,” and that such hand positioning is confirmed by
Slawienski’s explanation that “a push button connected to the latch [26] is
positioned ‘above the lever so as to be readily operated’” by the rider’s
hand. Br. 14.
However, in the statement of the rejection in the Answer, the
Examiner expressed a contrary position regarding the “shielding” aspect of
lever 23, then finding that Slawienski’s lever 23 constitutes a “means . . . for
shielding a hand of a rider of the vehicle” (Ans. 5) because it “serves as a
protective cover or barrier to cover the rider’s hand from the elements
positioned below the lever 23, such as spring 15, ear 20 etc., thus, it
performs the claimed means-plus-function based on the ordinary and
customary meaning of the term ‘shield’ in [the] dictionary (Ans. 13) ”
(emphasis added). Appellants responded by again arguing that the Examiner
has failed to interpret the means-plus-function language in the proper
manner (Reply Br. 3-4), and that the Examiner’s position is “based on an
improper construction of the means for shielding limitation,” in view of the
disclosure of this feature in Appellants’ Specification as being positioned in
front of the handlebar to protect the rider’s hand (Reply Br. 5). Appellants
assert that MPEP § 2106 instructs Examiner’s to interpret means-plus-
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function language according to 35 U.S.C. § 112, sixth paragraph. Reply Br.
4.
The shield disclosed in Appellants’ Specification clearly protects the
rider’s hand from debris and other such hazards encountered by the forward
motion of the vehicle when the rider’s hand is on the handlebar, and not
from objects located between the rider’s hand and the handlebar. Means-
plus-function language must be interpreted to read on only the structures
disclosed in the specification and equivalents thereof. See In re Donaldson,
supra. It is our view that the Examiner has not met this burden, for
Slewienski’s lever 23 does not constitute a shield as disclosed in Appellants’
Specification, and because the Examiner has not provided persuasive
explanation of why it should be considered to be an equivalent of that shield.
Because all of the elements recited in claim 1 are not disclosed or
taught by Slewienski, this rejection of claim 1 is not sustained, nor is the like
rejection of claims 2-9, which depend from claim 1.
Independent claim 10 is directed to a kit for a handguard mounting
assembly configured to be connected to a vehicle and a handshield, and
recites “an arm configured to be pivotally connected to a handshield.”
Appellants argued that since lever 23 cannot “fairly be described as a
handshield” (Br. 16), this claim is not anticipated by Slawienski. The
Examiner’s response was merely to refer to the positions expressed with
regard to the rejection of claim 1 as being anticipated by Slawienski. As was
the case with claim 1, we find the Examiner’s arguments not to be
persuasive, and therefore the rejection of claim 10 is not sustained nor, it
follows, is the rejection of dependent claims 11-13.
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Rather than describe the shield in terms of a means-plus-function, as
was the case in claim 1, independent claim 14 recites this element as “a
shield connected to an arm.” For the reasons set forth supra, we do not
agree with the Examiner that Slawienski’s lever 23 constitutes a “shield,”
and we therefore will not sustain the rejection of claim 14 or of claims 15-
20, which depend from claim 14.
Additionally, we point out that ordinarily an objection, such as that set
forth by the Examiner in this case, is reviewable by petition under 37 C.F.R.
§ 1.181, while a rejection is appealable to the Patent Trial and Appeal Board.
In the present case, the Examiner has objected to the specification “as failing
to provide proper antecedent basis for the claimed subject matter ‘means for
shielding a hand of a rider of the vehicle’ in claim 1” (Ans. 3), because it
fails to clearly link or associate the structure to the function recited in the
claim (Ans. 9-10). To the extent that the objection turns on the same issues
as the rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph, our
decision with respect to that rejection likewise is dispositive as to the
corresponding objection.

DECISION
The rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph,
is reversed.
The rejection of claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Slawienski is reversed.

REVERSED

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