Ex Parte Riondato

Patent Trial and Appeal BoardMar 26, 2015

12226755 (P.T.A.B. Mar. 26, 2015)

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. 12/226,755 10/27/2008 Francesco Riondato BA-23070 PCT 4103 178 7590 03/27/2015 BUCKNAM AND ARCHER 1077 NORTHERN BOULEVARD ROSLYN, NY 11576 EXAMINER CRANMER, LAURIE K ART UNIT PAPER NUMBER 3636 MAIL DATE DELIVERY MODE 03/27/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCESCO RIONDATO ____________ Appeal 2013-001648 Application 12/226,755 Technology Center 3600 ____________ Before ANNETTE R. REIMERS, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Francesco Riondato (“Appellant”) 1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 12–22, which are all the pending claims. Appeal Br. 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is M.d’A. Francesco Riondato. Appeal Br. 3. Appeal 2013-001648 Application 12/226,755 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates to a bicycle saddle. See, e.g., Spec., Abstract. Claims 12 and 18 are independent. Claim 12, reproduced below with disputed limitations italicized for emphasis, is illustrative of the subject matter on appeal. 12. A bicycle saddle suitable for racing having two longitudinally symmetrical identical portions (1, 1′) and a length of about 27 cm, comprising: a) two adjacent rear parts (2, 2′) having a total width of about 13 to 14 cm and joined by a hollow shaped section (21) about 4 to 6 cm in length and about 1.5 cm deep, said hollow shaped section (21) being adapted to prevent a cyclist’s coccyx from touching said bicycle saddle’s surface, each rear part (2, 2′) including a rear portion sloping upwardly at an angle of about 10° to 20° so as to be adapted to support the cyclist’s gluteus muscles, a part (2′′, 2′′′) proximate to said hollow shaped section (21) being substantially flat and having a total width of about 7 cm, a side part (2′′′′, 2′′′′′) extending downwardly from each said flat part (2′′, 2′′′), respectively, at an angle of about 45° to 60° so as to be adapted to prevent friction against the cyclist’s gracilis and adducent muscles during pedaling, said adjacent rear parts (2, 2′) having a recessed rear intermediate zone (3) substantially dove-tailed in shape commencing at an end of said hollow shaped section (21) and terminating at said rear parts (2, 2′) at ends (5′, 5′′), respectively, about 2.5 to 3 cm apart; b) two front portions (7′′, 7′′′) joined respectively to the flat parts (2′′, 2′′′) of said adjacent rear parts (2, 2′) sloping upwardly from the juncture of said front portions (7′′, 7′′′) with said flat parts (2′′, 2′′′) at an angle of about 5°, the bicycle saddle having a width at the juncture of said front portions (7′′, 7′′′) with said flat parts (2′′, 2′′′) of about 6 to 8 cm narrowing towards a front end of said bicycle saddle to about 4 to 4.5 cm, said front portions (7′′, 7′′′) having sides extending substantially Appeal 2013-001648 Application 12/226,755 3 perpendicularly downward, the cyclist’s isciatic tuberosities and ischial pubic rami being supportable on said flat parts (2′′, 2′′′) and front portions (7′′, 7′′′), respectively; c) two front end sections (9, 9′) continuing from said front portions (7′′, 7′′′), respectively, said front end sections (9, 9′) sloping downwardly in a substantially hook shaped curve at an angle of about 30° to 45° and uniting at the front end of said bicycle saddle in a substantially semi-circular shape having a diameter of about 3.5 to 4 cm, the downward sloping of said front end sections (9, 9′) being adapted to prevent compression of the cyclist’s genitals and compression of the deep dorsal artery and vein so as to maintain normal blood flow; d) a central channel (20) commencing at a front terminus of said hollow shaped section (21) with a semi-circular shape having a diameter of about 3 cm which narrows to a width of about 2.5 cm and terminating at the front end of said bicycle saddle with a semi-circular shape and having a depth from the bottom of said central channel (20) to the top surface thereof of about 1 cm, said central channel (20) separating unjoined portions of said rear parts (2, 2′), said front portions (7′′, 7′′′) and said front end sections (9, 9′), the cyclist’s perineum being disposable above said central channel (20) so that the structures thereof are not compressed, whereby the cyclist is supportable on said bicycle saddle exclusively on the gluteus muscles, the isciatic tuberosity, and the pubic ischium; and e) a wall (24) disposed at the bottom of said central channel (20) whereby to establish a housing to receive the vascularizations and structure of the floor of the perineum and genitals of the cyclist sitting on the saddle, said wall (24) closing the bottom of said central channel (20) so as to shield said housing from the environment therebelow and protect the cyclist’s organs therefrom. Appeal 2013-001648 Application 12/226,755 4 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Blake US 1,538,542 May 19, 1925 Hajduczyk US 7,328,944 B2 Feb. 12, 2008 Milton US 7,341,308 B2 Mar. 11, 2008 Riondato ’281 US 7,537,281 B2 May 26, 2009 Riondato ’391 US 7,699,391 B2 Apr. 20, 2010 REJECTIONS The following rejections are before us for review: I. Claims 12, 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281 and Blake. II. Claims 12, 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’391 and Blake. III. Claims 13–16 and 19–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281, Blake, and Hajduczyk. IV. Claims 13–16 and 19–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’391, Blake, and Hajduczyk. V. Claims 12, 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281 and Milton. VI. Claims 12, 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’391 and Milton. Appeal 2013-001648 Application 12/226,755 5 VII. Claims 13–16 and 19–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281, Milton, and Hajduczyk. VIII. Claims 13–16 and 19–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’391, Milton, and Hajduczyk. ANALYSIS Rejections I–IV – Obviousness over Riondato ’281 or Riondato ’391 with Blake or with Blake and Hajduczyk Appellant relies on the same arguments against the rejections of independent claims 12 and 18, and does not set forth any additional substantive arguments against the rejections of the associated dependent claims. See Appeal Br. 11–14; Reply Br. 2–3. We select claim 12 as representative of the issue that Appellant presents in the appeal, with claims 13–22 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Examiner found that either Riondato ’281 or Riondato ’391 each discloses a bicycle saddle substantially as claimed, with the exception of a wall disposed at the bottom of the central channel. Ans. 3–4. Next, the Examiner found that Blake teaches a central channel with a thin wall disposed at the bottom of the channel as claimed. Id. The Examiner then concluded that, given the teachings of the prior art, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify either Riondato ’281 or Riondato ’391 to include a wall at the bottom of the channel to “provid[e] the obvious advantage and Appeal 2013-001648 Application 12/226,755 6 predictable results of greater protection for the rider’s genitals.” Id. at 3; see also id. at 4–5. Appellant asserts that the “inventive feature” of the claim “is the provision of the wall 24 at the bottom of [the] central channel 20 of the bicycle saddle,” for the benefit of protecting the rider’s organs disposed above the central channel from the exterior environment below the saddle, such as wet road conditions. Appeal Br. 11. Appellant contends that the identified thin wall of Blake is provided for a different function—namely, for strength and rigidity—rather than for protecting a rider’s organs from the exterior environment, such that the “purpose and function” of Blake’s wall is different from that of the present invention. Reply Br. 2; Appeal Br. 13–14. We are not persuaded by Appellant’s contention because Appellant does not present any evidence or technical reasoning why the identified structure of Blake’s wall would not also provide the claimed protection from the environment if included on the saddle of either Riondato ’281 or Riondato ’391 as applied in the rejection. The Examiner articulated reasoning based on rational underpinnings in support of the legal conclusion of obviousness applied in the rejection, as discussed supra. See Ans. 3–5; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We note that the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); see also KSR Int’l Co., 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, Appeal 2013-001648 Application 12/226,755 7 Appellant’s assertion does not apprise us of error in the Examiner’s findings or reasoning for the conclusion of obviousness. Moreover, we agree with the Examiner’s explanation that Blake teaches that the identified wall structure “not only reinforces the saddle structure, but also closes the bottom of the opening.” Ans. 10. Furthermore, the Examiner reasonably bolsters this explanation by expounding that, because Blake teaches protection for the private organs of a rider, one of ordinary skill in the art would find obvious the claimed function of protecting a rider’s organs from the environment below the saddle. Id. at 9–10; see also Blake, col. 1, ll. 16–19. Finally, we agree with the Examiner’s position that the combination of teachings applied in the rejection would necessarily provide protection from the environment as broadly recited in the claim because the bottom of the central channel would be covered. Ans. 10. Thus, Appellant has not apprised us of error in the rejection as presented. Accordingly, for the foregoing reasons, we sustain the rejections of independent claim 12, and of claims 13–22 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281 or Riondato ’391 with Blake or with Blake and Hajduczyk. Rejections V–VIII – Obviousness over Riondato ’281 or Riondato ’391 with Milton or with Milton and Hajduczyk As above, Appellant relies on the same arguments against the rejections of independent claims 12 and 18, and does not set forth any additional substantive arguments against the rejections of the associated dependent claims. See Appeal Br. 14–16; Reply Br. 3. We again select Appeal 2013-001648 Application 12/226,755 8 claim 12 as representative of the issue that Appellant presents in the appeal, with claims 13–22 standing or falling therewith. The Examiner’s findings and reasoned explanations for the conclusion of obviousness are substantially the same as those discussed above, noting that Milton also teaches a central channel with a thin wall disposed at the bottom of the channel as claimed. Ans. 6–7. Again relying on the feature of the provision of a wall at the bottom of the central channel, Appellant contends that the identified thin wall of Milton is provided for a different function—namely, to strengthen the saddle after cutting the slot—rather than for protecting a rider’s organs from the exterior environment, such that the “specific stated purpose” of Milton’s wall is different from that of the present invention. Reply Br. 3; Appeal Br. 15–16. As above, however, we are not persuaded by Appellant’s contention because Appellant does not present any evidence or technical reasoning why the identified structure of Milton’s wall would not also provide the claimed protection from the environment if included on the saddle of either Riondato ’281 or Riondato ’391 as applied in the rejection. The Examiner again articulated reasoning based on rational underpinnings in support of the legal conclusion of obviousness applied in the rejection. See Ans. 6–7. We also agree with the Examiner’s explanation that Milton teaches a central opening channel, resulting in protection for a rider’s genitals as in the present invention, where the thin wall closes off the bottom of the opening for the common purpose of protection. Ans. 11–12; see also Milton, col. 5, ll. 34–37. Thus, for reasons similar to those explained in detail above and those well expressed in the Examiner’s Answer, Appellant has not apprised us of error in the rejection as presented. Appeal 2013-001648 Application 12/226,755 9 Accordingly, we also sustain the rejections of independent claim 12, and of claims 13–22 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Riondato ’281 or Riondato ’391 with Milton or with Milton and Hajduczyk. DECISION We AFFIRM the Examiner’s decisions rejecting claims 12–22. 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 tkl