(dissenting).
I must respectfully dissent with respect to the affirmance of the rejection of claim 8. It is not clear to me why the majority is affirming the rejection.
Claim 8, in my judgment, clearly distinguishes patentably from anything disclosed in or suggested by the Mellano reference which, except for the fact that it deals with cycle seats, is quite far .afield from what is being claimed.
In spite of the fact that appellant’s application is entitled “Cycle Covers,” what is described and claimed is not a cycle cover but a cycle seat comprising, as the claims clearly indicate, a combination of elements related in a particular way. The basic elements are the sheet-metal frame, which is saddle-shaped, and the cover, which is a cover for the frame. The cover is not a seat but the sheet-metal “frame” is and would so function even without the cover. The invention here is not merely putting a bead on the cover but is a new way, nowhere suggested in the references, of securing the frame and cover together. The essence of this new way is the concept of a wedging relationship between the cover edge and the peripheral channel. There is a new functional relationship.
Claims 8 and 9 are but two diffierent definitions of the same embodiment. Claim 9 is broader than claim 8 in calling for “wedge means” on the cover instead of a “beaded edge.” But claim 8 is broader than 9 in not requiring the means that engages the bead to be “integrally formed” on the frame. These differences, however, are irrelevant to patentability over the references, as I read them.
I cannot find in Mellano a “cycle cover” or, more accurately, a cycle seat cover in the sense in which appellant’s claims use that term or in any ordinary sense of the term. Take away from Mellano what the court is calling a “cover” and there is no seat there to be covered. Mellano does not call the element the court relies on a “cover.” He calls it a “rubber support,” which it is.
There is here in the structure of the claims the “new functional relationship” which, prior to the 1952 Act, was a recognized test for the presence of patentable “invention,” as developed by Roberts, “Patentability and Patent Interpretation,” Vol. I, p. 33:
“A new invention within the domain of industrial art is created whenever there is established a new functional relationship between any of the factors which are required for rendering such invention practically operative; or in other words, whenever any of the constituent factors of an invention belonging to an industrial art, are functionally related to each other in a novel mode.”
Such new functional relationship is indicative of the unobviousness of the change made over the prior art.
The only feature I can find in Mellano which is relevant to applicant’s claimed structure is the bead on the flexible rubber support, but it is a bead on the edge of a rubber seat which is stretched between two spaced-apart front and rear frame members in order to provide a resilient suspension for the rider. There is no “saddle shaped sheet metal frame” as called for in the claims, to be covered with a flexible cover. Mellano’s rubber is the seat, stretched like a trampoline. It covers practically nothing. He has no saddle-shaped sheet-metal frame with a “channel shaped outer periphery” as call*752ed for in claim 8, or with “integrally-formed. means for wedgingly engaging said wedge means,” as specified in claim 9. He clamps opposite edges of his stretched rubber seat with clamps bolted, not wedged, to curved metal strap-like front and rear members which, in the absence of the rubber, would provide no seat whatever and are neither sheet metal nor saddle-shaped, within the common meaning of those words as used in applicant’s claims and specification.
I cannot agree with the rejection of the examiner, accepted by the board without discussion, and apparently also accepted by the court’s opinion. The rejection of claim 8 calls for reversal as clearly as the rejection of claim 9. And should the examiner in “further proceedings” reconsider claim 9, it is, in my opinion, as clear of Mellano as claim 8.
Since Mellano has no “wedging” engagement, I fail to see what makes the claimed subject matter obvious.