Appeal No. 99-0520
Application 08/519,160
suspension of Trimble would fail if the top tube were eliminated. As evidenced by
numerous cited references including Riva (U.S. Patent No. 2,756,071), it is common
and well known in the art to construct a bicycle suspension frame having a single,
longitudinally extending "main tube" which is pivotally attached to the rear wheel and
pedal drive mechanism, the single tube being fully capable of supporting the rider and
allowing the bicycle to be operated without failure.
However, even were the bicycle frame of Trimble found to fail with the removal of
the top tube, the claims as written would still not define thereover. The claim language
merely requires "a bicycle frame suspension comprising a single, longitudinally
extending main tube . . . . " (emphasis added). The suspension assembly of Trimble
comprises tube 14, which is shown as having every limitation claimed in connection with
the main tube of the present invention, and further there is no language in the claims
which precludes the use of a second tube for additional compressive support. In light
of the open-ended recitation "comprising", that the term "main tube" has no specific
structural significance in the art, and that the tube 14 contains every claimed limitation of
the main tube, appellant's arguments are not deemed persuasive.
We first note that a claim is not anticipated unless every limitation thereof is described,
expressly or inherently, in a single prior art reference. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). Therefore, the entire argument as to whether the top tube of
Trimble could be eliminated is not germane to the question of anticipation, since Trimble does not
describe a bicycle frame which does not have a top tube.
As for the examiner's argument concerning the term "comprising," he is certainly correct that this
term in a claim allows the addition of other, unrecited elements. Phillips Petroleum Co. v. Huntsman
Polymers Corp., 157 F.3d 866 , 874, 48 USPQ2d 1161, 1167 (Fed. Cir. 1998). "However, the
meaning of the word 'comprising' cannot be construed to extend so far as to eliminate the expressed
limitations which the appellant has placed within his claims," In re Samiran, 86 F.2d 756, 758, 32
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007