Ex Parte Pickett

Board of Patent Appeals and Interferences

Mar 16, 2012

11132239 (B.P.A.I. Mar. 16, 2012)

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.
11/132,239 05/19/2005 Thomas C. Pickett 6265 5880
6858 7590 03/16/2012
BREINER & BREINER, L.L.C.
115 NORTH HENRY STREET
ALEXANDRIA, VA 22314
EXAMINER
SKURDAL, COREY NELSON
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
03/16/2012 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 THOMAS C. PICKETT
____________________

Appeal 2010-003301
Application 11/132,239
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003301
Application 11/132,239
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

The claims are directed to an activity equipment carrying apparatus.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A sports or activity equipment carrying apparatus
comprising:
an adapter; and
a holding member extending from said adapter, said
holding member being in a plane substantially different than
said adapter and said plane being substantially vertical to said
adapter, said holding member is constructed and arranged to
hold and carry a sports or activity equipment in a plane
substantially different than said adapter,
wherein said adapter secures said carrying apparatus to a
bicycle.

REJECTIONS
Claims 1-6, 8 and 10-16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Perry (US 469,715, iss. Mar 1, 1892). Ans. 3.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Perry and Jette (US 2,589,497, iss. Mar. 18, 1950). Ans. 5.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Perry, and Christen (US 5,244,132, iss. Sep. 14, 1993). Ans. 6.

OPINION
The rejections of claims 1-6 and 9-16 are affirmed.
The Examiner and Appellant generally agree as to what Perry
discloses. Ans. 3-5; App. Br. 7-10. Appellant and the Examiner disagree as
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Application 11/132,239
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to whether Perry, in the folded, out-of-use position depicted in figure 2
anticipates independent claims 1 and 15. App. Br. 10-14; 19-22, Reply Br.
2-5; Ans. 3, 6-7. We agree with the Examiner that Perry, in the folded
configuration, anticipates claims 1 and 15. Claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
The Examiner considers the plane of Perry’s shelf C, interpreted as the
claimed “holding member”, as substantially different than, and vertical to,
the adapter. Ans. 3-4. Appellant does not dispute the Examiner’s position in
this regard. In light of the locking feature (offsets c2, c3 selectively lock
behind upright portions b2 of the main frame) and strap D, the Examiner
reasonably found that Perry’s shelf was “constructed and arranged to hold
and carry a sports or activity equipment” in that position. Ans. 7; contra
Reply Br. 3-4; Perry, col. 3, ll. 28-41. Appellant did not persuasively show,
by evidence or technical reasoning, why Perry’s device would not be
capable of being used “to hold and carry a sports or activity equipment” in
the manner suggested. See, e.g., In re Swinehart, 439 F.2d 210, 213 (CCPA
1971) (“[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.”). We thus sustain the rejection of claims 1 and 15 based on this
rationale.
The Examiner offers an alternate rationale for rejecting claims 1 and
15 based on the configuration of Perry in the open position depicted in figure
1. Ans. 4, 7-8. The Examiner states that Perry’s shelf may be “in a plane
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Application 11/132,239
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substantially different than said adapter” in the open position because claims
1 and 15 do not define the plane the adapter is in so narrowly as to require
that plane to be substantially the same as that of Perry’s shelf in the open
position. Id. Claims 1 and 15 do not actually describe the plane of the
adapter at all. One must presume the adapter lies in a plane for purposes of
comparison with the plane of the recited “holding member.” The Examiner’s
interpretation that Perry’s clasp A, A’, reads as the claimed “adapter,” may
be considered to be in a plane including the longitudinal axis of the clamped
member, for example support H in Perry’s figure 1, and parallel to the plane
in which the sides b2 and cross-bar b3 members lie, is therefore reasonable.
The Examiner also correctly interpreted the claims as directed to a
“carrying apparatus” and not the combination of a carrying apparatus with a
bicycle. Thus, the adapter according to claims 1 and 15 need not be attached
to the bicycle in any particular location or orientation. Furthermore, the
bicycle itself may assume various positions in which the Perry’s shelf is
vertical to the adapter. “[A]pparatus claims cover what a device is, not what
a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Since it may be attached to other portions of the
bicycle, as Perry suggests (col. 1, ll. 11-13, col. 2, ll. 74-76), for example a
horizontal crossbar, even in the open position Perry’s carrier meets the
claims. Thus, again, the distinction according to the Examiner’s alternate
interpretation lies only in the manner of use. Accordingly, we also sustain
the Examiner’s rejection of claims 1 and 15 based on this alternate rationale.
The discussion above regarding the intended position of the adapter
on the bicycle is also relevant to the issues raised by Appellant regarding
claims 10 and 11. App. Br. 16-18. Claims 10 and 11 require the carrying
apparatus to be adapted to affix to the bicycle such that the prongs extend off
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Application 11/132,239
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the back (claim 10) or side (claim 11) thereof. Since Perry suggests the
carrier may be attached to various locations, including the seat post (col. 1,
ll. 11-13, col. 2, ll. 74-76), the Examiner reasonably found that Perry’s
carrier is adapted to be affixed in the manner described by claims 10 and 11.
Thus, we agree with the Examiner that Perry anticipates claims 10 and 11.
Regarding claim 9, the Examiner correctly found that Christen
discloses portions 15-19 of a support rack 12, “stiffening member[s],” that
support a luggage receiving member 13 by affixing (via 23, 24) to the back
bar 25 of a bicycle. Appellant contends that the Examiner cites no reason to
incorporate Christen and that Christen’s support is incompatible with Perry’s
shelf. App. Br. 25-26. Appellant’s arguments are not persuasive. The
Examiner correctly concluded that Perry’s shelf, which may be attached to
various locations of the bicycle such as the seat post, would benefit from
additional support at the unsupported end of Perry’s cantilevered shelf
opposite the adapter. Such a modification would enable Perry’s shelf to
accommodate heavier loads. Since Perry’s shelf and Christen’s luggage
receiving member 13 are substantially similar in both structure and function
we perceive no incompatibility of Christen’s teachings regarding support
and Perry’s shelf as Appellant suggests. Additionally, we note that the
applicability of Christen’s teachings regarding support are not confined to
the specific structure of a shelf having a horizontal orientation because
minor changes in the length or angles of the support member would enable
Christen’s support to be beneficial for shelves in other orientations. Further,
as noted above, the verticality of a bike shelf with respect to a supporting
adapter is dependent upon the orientation of the bike itself.
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Application 11/132,239
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Appellant does not present separate arguments for dependent claims
2-6, 12-14, and 16. As such, we affirm the rejection of these claims for the
reasons discussed above regarding claims 1, 10, 11, and 15.

The rejections of claims 7and 8 are reversed.
Claim 8 does not expressly define the support function of the brace
plate. App. Br 15-16; Ans. 8. However, it is not apparent, and the Examiner
does not explain, how Perry’s spring cover or presser E, formed of a bent
wire, constitutes a “plate.” See Perry, figs. 6, 7. Further, Perry’s presser E is
a replacement for Perry’s straps D—the structure relied upon by the
Examiner to find Perry was “constructed and arranged to hold and carry a
sports or activity equipment” for purposes of claim 1. Ans. 7. The Examiner
does not advance an alternate line of reasoning to demonstrate why claim 8
along with the claims from which it depends was anticipated by the alternate
embodiment depicted in Perry’s figures 6 and 7. In an anticipation rejection,
“it is not enough that the prior art reference … includes multiple, distinct
teachings that [an ordinary] artisan might somehow combine to achieve the
claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). We therefore must conclude that the Examiner
improperly relied on alternative features from different embodiments to find
that Perry anticipates claim 8. Accordingly, we will not sustain the rejection
of claim 8.
Regarding claim 7, Appellant correctly points out (App. Br. 23-24)
that since Jette’s tubes 2 are formed from a metal band as opposed to a rod
(Jette, col. 1, ll. 53-55, figs. 2, 5), it was unreasonable for the Examiner to
interpret Jette’s tubes as the claimed “loop rod ends.” Accordingly, we do
not sustain the rejection of claim 7.
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Application 11/132,239
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DECISION
The rejections of claims 1-6 and 9-16 are affirmed.
The rejections of claims 7 and 8 are reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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