Appeal No. 2004-1108
Application 09/756,833
Accordingly, since a prima facie case of anticipation has been established over Rota by
the examiner, we have again evaluated all of the evidence of anticipation and non-anticipation
based on the record as a whole, giving due consideration to the weight of appellant’s arguments
in the brief. See generally, See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655,
1657 n.3 (Fed. Cir. 1990.
Appellant submits that in determining anticipation under § 102(e), “a primary tenet is that
only the CLAIMED designs are to be compared,” but does not cite authority for this proposition.
Appellant points out that “distinguishing features and characteristics claimed in Rota . . . [are] for
the purpose of proving [sic, providing] an urging force against the dorsal arch of the user” to aid
“in maintaining proper posture,” and that “an ‘hourglass’ shaped back plate” is used in this
respect (brief, pages 7-8). Thus, appellant argues that the three specified structural components
of the claimed backpack “are unanticipated,” noting that the claimed feature of “a rigid back
support plate that is vertically elongated” is “not ‘hourglass’ shaped” (id., page 8). Appellant
further contends that “any padding anticipated in the scooter storage and carrying backpack . . . is
consistent with the shape of the backpack, and not in an ‘hourglass’ shape to accommodate . . .
the user” (id.).
Appellant contends that “the present invention teaches away from the intent of Rota in
that the present invention is NOT a ‘rucksack of the general type’ designed for ‘school use,’” and
that “Rota is designed to accommodate heavily loaded rucksacks; however, the present invention
is designed specifically to accommodate the shape and weight of a foldable, wheeled scooter”
(id.; understrike and italics emphasis in original).
In response, the examiner submits that “the functional limitation of holding a scooter does
not define appellant’s” claimed invention encompassed by appealed claim 1 over Rota, finding
that “[i]t is well known that there are numerous foldable or collapsible scooters that when folded
or collapsed are of a size that would permit them to be held within a backpack”3 (answer, page
3 The examiner relies on evidence in “Banda (US 5,9278,733)” and Ogami, both of record, to
support this ground of rejection but has not included these references in the statement of the
ground of rejection (see answer, page 9). Accordingly, we have not considered the references as
here applied by the examiner. Cf. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970); Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993).
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