Appeal No. 2001-1915 Page 5
Application No. 09/362,590
beneath the seat and therefore meet the terms of the claim and at least one fastener that is
visible and thus is not in accord with the claims. Nevertheless, the visible one is a
mounting bracket fastener, which is not permitted by the claim, and we know of no authority
that allows the examiner simply to decide to disregard a portion of the structure of a
reference that is relevant to the issue of patentability, which is what was done in this case.
The second theory is based upon the conclusion that the visible fastener really is not
necessary to Wright’s invention. As disclosed, Wright’s mounting bracket is attached at its
forward portion by four fasteners and at its rearward portion by at least one. While the
reference states that not all of the holes will be used in any particular motorcycle (column 2,
line 55), it is our opinion that one of ordinary skill in the art would have recognized that
removal of the rear fastener would at the very least be quite detrimental to the proper
attachment of the mounting bracket to the fender of the motorcycle, for it would leave the
rear portion free to move and/or to twist, especially under the load applied by the weight
and movement of a rider sitting in the seat attached to the bracket, a condition that could
have serious consequences. Thus, in the absence of evidence to the contrary, the
examiner’s conclusion that the rear fastener is unnecessary is mere speculation, and for
the reasons explained by the appellants on page 4 of the Brief, this situation differs from
that presented to the court in In re Karlson. Consideration of the teachings of Abram does
not alter our conclusions.
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