Appeal No. 2004-1108
Application 09/756,833
Kearl. In any event, in the absence of the declaration under § 1.131, both Rota and Kearl are
applicable prior art with respect to the claimed invention even though they issued subsequent to
the filing date of the present application, because the applications maturing into these patents
were filed prior to the filing date of the present application, thus satisfying the provisions for
prior art under such circumstances set forth in 35 U.S.C. § 102(e) (2002).
Appellant describes the teachings of each of Kearl, McDermott, Mott and Cannaday, and
concludes that the features relied on by the examiner in each reference could not be included in
the claimed backpack for transporting a scooter (brief, pages 10-11). Appellant also describes
Ogami as teachings “a portable motor-driven scooter board that is capable of being disassembled
for purposes of carrying the components [sic] ‘into a bag’” (id., page 11). Appellant further
contends that “[t]here is no suggestion as to the desirability of any modification of the references
to describe the present invention,” arguing that “[a]n analysis of the disclosures within the cited
references fails to cite every element of the claimed invention” (id., page 12). Appellant
describes elements of the backpacks found in each of Kearl, McDermott, Mott and Cannaday
which are alleged to be outside of the elements of the claimed backpack encompassed by the
appealed claims (id., pages 12-13). In this respect, appellant again describes Ogami in the same
language as before (id., pages 11 and 13). On this basis, appellant argues that “[n]one of these
prior art reference [sic] suggest even the slightest motivation for making a specially adapted
scooter storage and carrying backpack” (id., page 13).
The examiner argues that each of Rota, McDermott, Kearl, Mott and Cannaday is
analogous prior art “within appellant’s field of endeavor, i.e., backpacks,” citing Oetiker, supra
(answer, page 10). With respect to Ogami, the examiner points out that “this reference teaches a
collapsible scooter that can be knocked down in compact pieces and then put into a bag so that it
can be manually carried when not” in use, and being “the same concept as appellant’s invention,
. . . is clearly in appellant’s same field of endeavor” (id.). Thus, the examiner argues that the
teachings with respect to backpacks “are pertinent to the particular problem with which appellant
is concerned” (id.).
We agree with the examiner that each of the applied references is pertinent to both
appellant’s field of endeavor and the problem which appellant addresses. See also In re Clay,
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