BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE TIMOTHY E. BRUMMER Appeal No. 87-3579

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 87-3579

May 11, 1989



 Application for Patent filed February 18, 1986, Serial No. 830,914, which is a continuation-in-part of Serial No. 696,649, filed January 30, 1985. Recumbent Bicycle.



Timothy E. Brummer pro se.



Supervisory Primary Examiner--John J. Love



Examiner--E. Diederiks



Before Calvert



Vice Chairman



Stahl and Abrams














 This is an appeal from the decision of the examiner finally rejecting claims 9 through 11 and 13 through 16. Claims 1 through 8 and 12 have been cancelled. No claims have been allowed.



 The appellant's invention is directed to a recumbent bicycle. The subject matter before us on appeal is illustrated by reference to claim 9, which follows.



 9. A recumbent bicycle having a frame, a front wheel, a rear wheel, a seat, and a drive mechanism including foot pedals,



 the improvement comprising:

   said front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider that the bicycle was designed for;

   and said seat so located between said front and rear wheels that between 50 percent and 60 percent of the combined rider and bicycle weight is borne by the rear wheel.



 The reference relied upon by the examiner to support the final rejection under 35 USC 103 is:



 Moscogiuri (Italian Patent [FNa1]) 501,515 Nov. 25, 1954



 Claims 9 through 11 and 13 through 16 stand rejected under 35 USC 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as his invention.



 Claims 9 through 11 and 13 through 16 further stand rejected under 35 USC 103 as being unpatentable over Moscogiuri.



 The examiner's expression of these rejections can be found on pages 3 and 4 of the Answer, and the appellant's arguments in rebuttal on pages 3 and 4 of the Appeal Brief.





 After consideration of the positions and arguments presented by both the examiner and the appellant, we have concluded that the rejection under 35 USC 112, second paragraph, should be sustained, while the rejection under 35 USC 103 should not be sustained. Our reasons for this decision follow.



 We agree in general with the comments made by the examiner with respect to the rejection under Section 112. However, we wish to add the following, for emphasis.



 A patentee has the right to exclude others from making, using and selling the invention covered by the patent (35 USC 154). The purpose of the second paragraph of 35 USC 112 is to allow the public to know exactly what the patent covers, so that those who would approach the area circumscribed by the claims of a patent may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance. See In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).



  *2 In the case before us here, it is our opinion that one would be at a loss to determine whether a particular bicycle is covered by claim 9. No evidence has been made of record to show that a known "standard" exists in the field of bicycle manufacturing for sizing a bicycle to a rider. Therefore, a bicycle could be considered by the appellant to fall within the scope of claim 9, because on the basis of the standards he uses to size a bicycle to a rider the wheelbase is between 58 and 75 percent of the height of the rider "that the bicycle was designed for," while the manufacturer of the bicycle believes it does not, on the basis of his standards for sizing, which are different. This being the case, whether the bicycle was covered by the claim would be determined not on the basis of the structural elements and their interrelationships, as set forth in the claim, but by means of a label placed upon the bicycle at the discretion of the manufacturer. This would give rise to an uncertainty in the interpretation of the claims, which we believe to be exactly what the requirements of 35 USC 112, second paragraph, seek to avoid.



 Uncertainty also applies to the claim language regarding the seat location, for riders of the same height are not necessarily of the same weight, nor is their weight distributed upon their torsos in like fashion, and thus the question of correspondence between a particular bicycle and this requirement of the claim cannot be determined until a particular rider mounts the device. Therefore, the same bicycle might fall within this language of claim 9 when ridden by a rider of one combination of weight and build, but not when ridden by a rider of another.



 The examiner also has rejected the claims as being obvious in view of the bicycle disclosed by Moscogiuri. However, as set forth above, no reasonably definite meaning can be ascribed to certain language in claim 9 and, in such a case, the subject matter does not become obvious, the claim becomes indefinite. See In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). It is improper to rely on what are at best speculative assumptions as to the meaning of a claim and then base a rejection under 35 USC 103 thereon. See In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). We believe that to be the case here. Therefore, on this basis, we will not sustain the rejection under Section 103. It should be understood, however, that our reversal of the rejection under Section 103 is not a reversal on the merits of the rejection, but rather a procedural reversal predicated upon the indefiniteness of the claimed subject matter.



 We have, of course, carefully considered all of the arguments presented by the appellant, and we have examined the materials accompanying the Brief. However, this has not persuaded us that the rejection under Section 112 was in error, for the reasons expressed above. While we are not unmindful of the improvement the appellant believes he has made in the art, it is our opinion that the manner in which the invention has been defined in the claims before us on appeal causes them to fail to meet the statutory requirements of Section 112, second paragraph.






  *3 The rejection of claims 9 through 11 and 13 through 16 under 35 USC 112, second paragraph, is sustained.



 The rejection of claims 9 through 11 and 13 through 16 under 35 USC 103 is not sustained.



 The decision of the examiner is affirmed.



 Rule 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.









Ian A. Calvert



Vice Chairman



Robert F. Stahl






Neal E. Abrams






FNa1. Our understanding of this reference is based upon a PTO translation, a copy of which is enclosed.


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