Appeal No. 2001-1915 Page 4
Application No. 09/362,590
said seat and not visible during normal operation of said motorcycle,” and a luggage rack
secured to the mounting bracket.
It is the examiner’s view that all of the subject matter recited in claim 1 is disclosed
by Wright, except for the luggage rack, which is shown by Abram. The examiner takes the
position that it would have been obvious for one of ordinary skill in the art to mount a
luggage rack on the Wright mounting bracket “since this is common to facilitate transport
of cargo” (Answer, page 4). While the mounting bracket disclosed by Wright extends
under the motorcycle seat, it is quite clear from Figure 1 that at least one of the plurality of
fasteners used to attach the mounting bracket to the rear fender is visible during normal
operation of the motorcycle. With regard to this, the examiner advances two theories. The
first is that “certain fasteners are clearly under the seat” and these fasteners “are
considered to comprise ‘all fasteners’ to the same degree as claimed” (Answer, page 3).
The second theory is that the elimination of those fasteners that are visible “would have
been obvious since it has been held that the omission of an element and its function in a
combination where the remaining elements perform the same functions as before involves
only routine skill in the art” (Answer, page 4, citing
In re Karlson, 311 F.2d 581, 584, 136 USPQ 184, 186, (CCPA 1963)).
It is our opinion that neither of the examiner’s theories is on firm ground. As to the
first, the fact is that Wright has disclosed some mounting bracket fasteners that are
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