Case: 20-1347 Document: 43 Page: 1 Filed: 11/30/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: DAVID TSAI,
Appellant
______________________
2020-1347
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 90/013,961,
90/014,080.
______________________
Decided: November 30, 2020
______________________
JOSEPH A. BRUCE, Bruce Stone LLP, Indianapolis, IN,
for appellant. Also represented by JEFFREY JOHNSON,
Schmeiser Olsen & Watts LLP, Mesa, AZ.
DANIEL KAZHDAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Andrei Iancu. Also represented by THOMAS W. KRAUSE,
MONICA BARNES LATEEF, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, CLEVENGER, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
David Tsai (Tsai) appeals two reexamination decisions
of the United States Patent Trial and Appeal Board
Case: 20-1347 Document: 43 Page: 2 Filed: 11/30/2020
2 IN RE: TSAI
(Board). The first decision found claims 1, 2, 4–7, 14–17,
and 20 of U.S. Patent No. 7,240,816 (the ’816 patent) un-
patentable under 35 U.S.C. § 103, and the second decision
found claims 1–20 of the ’816 patent also unpatentable un-
der § 103. We affirm the second reexamination decision
and thus need not reach the merits of the first reexamina-
tion decision.
BACKGROUND
The ’816 patent is directed to a bicycle rack for a vehi-
cle. ’816 patent col. 1 ll. 5–6. The bicycle rack comprises a
base, two beams pivotally connected with the base, at least
one supporting device attached to each of the beams in or-
der to support one wheel of the bicycle, a post pivotally con-
nected with the base, and a hooking device attached to the
post in order to hook a portion of the bicycle.
Id. at col. 1
ll. 47–55. Claim 1 is representative:
1. A rack for holding at least one bicycle in position,
the rack comprising:
a base, wherein the base comprises a bottom and
two spaced, parallel walls extending from the bot-
tom, wherein each of the two walls comprises a plu-
rality of apertures;
two beams independently pivotally connected with
the base, wherein an internal end of each of the two
beams is located between the two walls and is piv-
otally mounted by a screw extending through cor-
responding apertures of the two walls and driven
into the internal end;
at least one supporting device attached to each of
the two beams in order to support one wheel of the
bicycle;
a post pivotally connected with the base, wherein a
lower end of the post is located between the two
walls and is pivotally mounted by a screw
Case: 20-1347 Document: 43 Page: 3 Filed: 11/30/2020
IN RE: TSAI 3
extending through corresponding apertures of the
two walls and driven into the lower end of the post,
with the screw of the post being spaced from and
parallel to the screws of the two beams,
a hooking device attached to the post in order to
hook the bicycle;
first and second pins received in corresponding ap-
ertures of the two walls and extending through the
two beams spaced from and parallel to the screws
pivotally mounting the two beams; and
a third pin received in corresponding apertures of
the two walls and extending through the post and
spaced from and parallel to the screw pivotally
mounting the post, with the plurality of apertures
receiving the first, second and third pins keeping
the two beams and the post in position.
Id. at claim 1.
On May 24, 2017, a first request for ex parte reexami-
nation was filed by an anonymous third-party requester.
The examiner rejected claims 1, 2, 4–7, 14–17, and 20 as
obvious, using James 1 as the primary reference. On Feb-
ruary 22, 2018, a second request for ex parte reexamination
was filed by King Roof Industrial Co., Ltd. For this second
reexamination, the examiner rejected claims 1–20 as obvi-
ous over various combinations of SportRack in view of
James, Graber, Fullhart, Mehls, Pedrini ’163, McLemore,
1 James refers to French Patent No. 8110176.
Case: 20-1347 Document: 43 Page: 4 Filed: 11/30/2020
4 IN RE: TSAI
Krieger, Reeves, and Pedrini ’347. 2 On appeal, the Board
affirmed the rejections in both reexaminations. 3
Tsai timely appealed to our court on January 10, 2020.
We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), but we re-
view the Board’s factual findings underlying those deter-
minations for substantial evidence, In re Gartside,
203 F.3d
1305, 1316 (Fed. Cir. 2000). A finding is supported by sub-
stantial evidence if a reasonable mind might accept the ev-
idence as adequate to support the finding. Consol. Edison
Vo. v. NLRB,
305 U.S. 197, 229 (1938). The scope and con-
tent of the prior art is a question of fact. See In re Mouttet,
686 F.3d 1322, 1330 (Fed. Cir. 2012). The presence or ab-
sence of a motivation to combine references is also a ques-
tion of fact. See Novartis Pharms. Corp. v. West-Ward
Pharms. Int’l Ltd.,
923 F.3d 1051, 1059 (Fed. Cir. 2019).
I
Tsai argues that the Board implicitly and erroneously
construed the claims of the ’816 patent as not requiring the
2 SportRack 2EZ (https://web.archive.org/web/
20030416222420/http://www.barrecrafters.com: 80/prod/
hitch2.html) (SportRack); U.S. Patent No. 4,394,948 (Gra-
ber); U.S. Patent No. 5,190,195 (Fullhart); U.S. Patent No.
6,089,430 (Mehls); U.S. Patent No. 6,929,163 (Pedrini
’163); U.S. Patent No. 6,857,545 (McLemore); U.S. Patent
No. 4,823,997 (Krieger); U.S. Patent No. 6,439,397
(Reeves); U.S. Patent No. 7,044,347 (Pedrini ’347).
3 Because we affirm the second reexamination deci-
sion, which finds unpatentable all the claims of the ’816
patent, we need not address the first reexamination deci-
sion.
Case: 20-1347 Document: 43 Page: 5 Filed: 11/30/2020
IN RE: TSAI 5
post and beams to be pivotally mounted between the base’s
two walls that are connected to the bottom. Appellant’s Br.
at 11. We disagree. A review of the Board’s decision makes
clear that the Board correctly understood the claim lan-
guage, carefully walking through the relevant claim limi-
tations and explaining how the cited prior art references
corresponded to those limitations. See J.A. 16–20. For ex-
ample, the Board relied on SportRack in view of James for
the pivoting post and mounting the post with a screw that
extends through apertures of the base’s two walls. J.A. 11–
12, 15–16, 17–18. James teaches “a screw configuration
mounted between and through the side walls.” J.A. 484.
The Board relied on Pedrini ’163 for a bicycle rack having
a base with two parallel walls extending from a bottom,
J.A. 16. Substantial evidence supports these findings and
we also conclude that the Board did not misconstrue the
claim limitations.
II
Tsai also contends that the Board improperly ignored
the declaration of Kevin Wren (Wren Declaration). Appel-
lant’s Br. at 19. The Board, however, correctly determined
that the declaration’s arguments were non-responsive to
the examiner’s rejection of the claims. J.A. 20. The Wren
Declaration incorrectly stated that the “claims assert a
clean and unimpeded access to the vehicle,” and also stated
that a skilled artisan would want a bicycle rack post that
leaned away from the vehicle to permit access to the back
of the vehicle. J.A. 211–12. But as the Board found, the
claims do not require such an “access” feature, nor does this
contention defeat the examiner’s reasons for combining the
cited references. J.A. 20.
III
Tsai avers that none of the prior art discloses the fol-
lowing claim limitations pertaining to apertures and pins:
“a base, wherein the base comprises a bottom and two
spaced, parallel walls extending from the bottom, wherein
Case: 20-1347 Document: 43 Page: 6 Filed: 11/30/2020
6 IN RE: TSAI
each of the two walls comprises a plurality of apertures,”
“first and second pins received in corresponding apertures
of the two walls,” and “a third pin received in corresponding
apertures of the two walls.” Appellant’s Br. at 27. We find
this argument to lack merit. Both the Board and the ex-
aminer pointed to Pedrini ’163, which teaches a post mem-
ber that is locked in an upright or tilted position via
rotation on a pivot screw and via locking pins. Pedrini ’163
col. 3 l. 51–col. 4. l. 10. As the examiner explained, “given
the explicit locking pin configuration of Pedrini ’163,” a
skilled artisan would know to modify SportRack to include
“locking pins and corresponding apertures in the two walls
of the bracket for each beam and the post such that they
are all parallel to the mounting screws for the post and the
beams.” J.A. 139. Graber, Fullhart, and Mehls also estab-
lish that skilled artisans were well aware of using locking
pins and corresponding apertures for securing posts and
beams for bike racks. See e.g., Mehls col. 5 ll. 6–46;
Fullhart col. 2 ll. 37–42. The Board and examiner reason-
ably found that use of pins would “allow for quick reposi-
tioning and fixation of the beams and post.” J.A. 19.
Substantial evidence thus supports the Board’s rationale
for why a skilled artisan would use pins with the Spor-
tRack bicycle rack, as modified by the teachings of Pedrini
’163.
We likewise see no reversible error with the Board’s
finding that the modification of SportRack that a skilled
artisan would undertake in view of James, Pedrini ’163,
and the other prior art references would preserve the rota-
tion of the beams. James teaches a bicycle rack with a post
and two beams that are all connected to two parallel walls.
J.A. 1665, 1684. James also teaches a screw for the post
that is parallel to the screws of the two beams. J.A. 1665–
66. The examiner found that it would have been obvious to
a skilled artisan to modify SportRack “to pivotally connect
the post using a screw oriented parallel to the screws of the
two beams” as taught by James, “such as by mounting the
Case: 20-1347 Document: 43 Page: 7 Filed: 11/30/2020
IN RE: TSAI 7
post screw in the parallel walls as the beam screws, in or-
der to fold up the rack with the post parallel to the beams,
and thereby achieve an implicitly more compact profile for
storage while still allowing for the post to tilt for ‘easy rear
car access’ as explicitly called for in SportRack.” J.A. 476–
77. In order to teach the limitation of a base having a “bot-
tom,” SportRack in view of James is further modified by
Pedrini ’163. The examiner found “the concept of rotating
beams attached to bases with bottoms of hitch-mounted
racks was well known in the art at the time of the inven-
tion,” and a skilled artisan “would have recognized the base
bottom as adding structural stability to the base,” such that
the rotation of the beams “is not affected by the bottom of
the base.” J.A. 480. Without evidence to the contrary, the
examiner reasonably found that it would have been a “mere
matter of engineering design choice” for a skilled artisan to
mount the rotating beams higher in the base’s walls so that
the bottom does not interfere with the rotation. J.A. 482.
The Board agreed with the examiner’s findings regarding
SportRack, James, and Pedrini ’163. J.A. 21. Thus, sub-
stantial evidence supports the Board’s determination that
the combination of SportRack, James, and Pedrini ’163
would still allow the beams of the resulting combination to
rotate without interference.
As to dependent claims 2 and 17, Tsai argues that Spor-
tRack and James cannot be modified by adding
McLemore’s collar because the beams of James would not
be able to rotate. Appellant’s Br. at 29. That argument is
not persuasive because, as already explained, the examiner
and Board’s SportRack, James, and Pedrini ’163 combina-
tion would not affect the pivotal rotation of the beams. The
addition of a collar attached to the bottom of the base—and
thus positioned below base—would likewise not affect the
rotation of the beams. We thus see no error in the Board’s
affirmance of claims 2 and 17.
Tsai also challenges the rejection to dependent claims
3 and 18, which recite that the collar has two wings
Case: 20-1347 Document: 43 Page: 8 Filed: 11/30/2020
8 IN RE: TSAI
extending from its sides. The Board reasonably found that
Krieger teaches the use of support wings. The examiner
found that given the known desire to add such reinforce-
ments to bicycle hitch mounted racks, it would have been
obvious to skilled artisans at the time of the invention to
have added wings or reinforcements to increase support
and stability. J.A. 493–94. Further, “[s]imple physics
would have led those in the art to the location of the likely
dynamic stress points relative to the hitch mount in such a
system, and routine design modifications without undue
experimentation would have led to the resultant location of
such wing reinforcements.” J.A. 494. The Board’s decision
in this respect is thus supported by substantial evidence.
CONCLUSION
We have considered Tsai’s remaining arguments and
find them either forfeited, too skeletal and underdeveloped
and/or unpersuasive. Substantial evidence supports the
Board’s factual determinations underlying its obviousness
rejection relying on SportRack as the primary reference.
Accordingly, the Board’s decision maintaining the exam-
iner’s rejection of claims 1–20 of the ’816 patent is
AFFIRMED
COSTS
No costs.
