Ex Parte 6681652 et al

Board of Patent Appeals and Interferences

Apr 30, 2009

95000045 (B.P.A.I. Apr. 30, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

SHIMANO, INC.
Requester, Respondent

v.

Patent of SRAM DEUTSCHLAND GmbH1
Patent Owner, Appellant
____________________

Appeal 2009-3429
Inter partes Reexamination Control 95/000,045
Patent US 6,681,652 B22
Technology Center 3600
____________________

Decided:3 April 30, 2009
____________________

Before JENNIFER D. BAHR, KEVIN F. TURNER and DANIEL S. SONG,
Administrative Patent Judges.

1 SRAM DEUTSCHLAND GmbH is the Patent Owner and the real party in
interest (App. Br. 1).
2 Issued January 27, 2004 to Auer et al.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.983(b)(1), begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date.

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Reexamination Control 95/000,045
Patent US 6,681,652 B2

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SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Owner appeals from a Final Rejection of claims 1-4 and 6-
8, claims 5, 9 and 11-15 having been canceled, while the patentability of
claim 10 has been confirmed (App. Br. 2). The Respondent has filed a
Respondent’s Brief in support of the Examiner’s rejection and requesting
construction of independent claim 1 under 35 U.S.C. § 112, sixth paragraph
(Respondent’s Br. 2). The Patent Owner has also filed a Rebuttal Brief in
response to the Examiner’s Answer. We have jurisdiction under 35 U.S.C.
§§ 134 and 315.
The Patentees claim a gear selection device including an indicator
element that indicates the selected gear. The gear selection device operates
so that the swept arc length of the indicator element along a curved surface
is smaller than the swept arc length of an actuating element.
The only independent claim reads as follows (numerals of figs. 1 and
2 added):
1. A gear selection device [1] for a variable gear
mechanism, comprising:
a control device [5] actuable by a force-transmitting
element [20] connected to the variable gear mechanism;
an actuating device [22] for manual actuation of the
control device [5];
a transmission device having [an] a curved surface; and
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a display device [3] with an indicator element [4]
arranged to move along the curved surface to display a gear
selected by the actuating device [22], the indicator element [4]
being a planet wheel device [10],
the transmission device arranged to transfer angular
movements of one of the actuating device [22] and the control
device [5] to the display device [3] such that the indicator
element [4] moves along a portion of the curved surface to
delineate a swept arc length that is always smaller than the
swept arc length through which [the] an actuating element [24]
of the actuating device [22] passes.

The single prior art relied upon by the Examiner in rejecting the
claims is:
Williams 3,901,097 Aug. 26, 1975

The Examiner rejected claims 1-4 and 6-8 under 35 U.S.C. § 102(b)
as anticipated by Williams.
We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in finding that Williams describes
an “indicator element being a planet wheel device” which moves along a
portion of a curved surface of a transmission device.
2. Whether the limitation “a transmission device” should be
construed under 35 U.S.C. § 112, sixth paragraph.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The specification of the ‘652 patent states:
The transmission device according to the
invention for transmitting the angular movements of the
actuating device via the control device 5 to the display
device 3 comprises a sun wheel device 8, designed as a
sun wheel segment 7, mounted on the control device 5;
a planet wheel device 10, designed as a planet gear
wheel 9; and a ring gear device 12, designed as a
segment 11 of a ring gear wheel.
(Col. 5, ll. 33-39).

2. Williams describes a control mechanism 10 including a
sun gear 68, pinion gears 78 and 80, a ring gear 82 (i.e.,
collectively, a transmission device), a plastic wall 25 having
drive ratio indicia 24 (i.e., a display device), and a pointer 92
(i.e., an indicator element) (col. 2, ll. 35-49; col. 3, ll. 16-28,
38-43; figs. 2 and 3).

3. The specification of Williams states:
It should be noted at this point that the
arrangement of gears 68, 78, 80, and 82 produces a
rotary movement of the pointer 92 equal in length to a
predetermined ratio, say, one-half, with respect to the
length of movement of the control knob 15, hence,
accommodating a more compact indicia 24 layout on
the instrument panel 12.
(Col. 3, lines 44-50).

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4. Williams describes that the pointer 92 is secured to the
side of the ring gear 82 by a leg-portion 94 (col. 3, ll. 38-39;
fig. 4).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. The properly interpreted claim must then be compared with the
prior art.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). This is the standard for claim interpretation in both
original examination and re-examination. See In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). “Absent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d
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319, 321 (Fed. Cir. 1989). “Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim.”
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). “However, claims are not to be read in a vacuum, and limitations
therein are to be interpreted in light of the specification in giving them their
broadest reasonable interpretation.” In re Okuzawa, 537 F.2d 545, 548
(CCPA 1976); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983).
Thus, the challenge is to interpret claims in view of the specification
without unnecessarily importing limitations from the specification into the
claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003).

ANALYSIS
Rejection based on Williams
The Examiner rejected claims 1-4 and 6-8 contending that Williams
describes each and every limitation of these claims (Ans. 5). The Examiner
contends that the recited “a transmission device” of independent claim 1 is
satisfied by the following components in Williams: sun gear 68, pinion gears
78 and 80, and ring gear 82 (FF 2; Ans. 5). The Examiner’s reading of the
“indicator element” of claim 1 on Williams is somewhat less clear. On the
one hand, the Examiner appears to equate the pointer 92 of Williams with
the indicator element; on the other hand, the Examiner asserts that the
pointer 92 (the indicator element) is “a planet wheel device,” as required by
claim 1, by alluding to different structure, namely, the sun gear 68, pinion
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gears 78 and 80, and ring gear 82 (Ans. 5). In essence, the Examiner
contends that based on the broadest reasonable interpretation, the recited “a
planet wheel device” is satisfied by the same components of Williams on
which the Examiner reads the “transmission device”: sun gear 68, pinion
gears 78 and 80, and ring gear 82 (Ans. 5 and 8). According to the
Examiner, the recitation “a planet wheel device” can be broadly construed
because there is no specific definition of “a planet wheel device” provided in
the specification, and limitations of the specification should not be read into
the claim (Ans. 8-12). The Respondent agrees with the Examiner’s rejection
(Respondent’s Br. 3).
The Appellant (Patent Owner) disagrees with the Examiner’s rejection
and argues that Williams discloses an indicator element 92 that is attached to
a movable ring gear 82 (FF 4), and does not describe an indicator element
that is a planet wheel device (App. Br. 5). In addition, the Appellant
contends that the specification sets forth a definition of the “transmission
device” as including the sun gear, a pinion gear and a ring gear, and that the
Examiner’s interpretation of the “planet wheel device” to include these other
devices contradicts this definition (App. Br. 4). Moreover, the Appellant
contends that the Examiner is ignoring the ordinary and customary meaning
of a “planet wheel device”, and is merely focusing on a dictionary definition
of “device” when there is no ambiguity as to what “planet wheel device”
means (App. Br. 4; Rebuttal Br. 2).
We first note that contrary to the Appellant’s assertion, the portion of
the specification of the ‘652 patent cited by the Appellant as providing a
definition of “a transmission device” (FF 1) is not a clear definition of “a
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transmission device” or an express disclaimer. The term “a planet wheel
device” is also not specifically defined in the specification. Clearly, “a
planet wheel device” requires, at a minimum, a planet wheel. However, by
the inclusion of the modifying term “device”, inclusion of other unrecited
components is not precluded.
Turning to the rejection, the Examiner clearly views the combination
of the sun gear 68, pinion gears 78 and 80, and ring gear 82 of Williams as
satisfying the recited “transmission device” of independent claim 1, and the
Examiner finds that these components transfer angular movements of an
actuating/control device to the display device in the manner recited in the
claim (Ans. 5). The Examiner’s application of Williams to the recited
“transmission device” is reasonable in that Williams describes that the
arrangement of sun gear 68, pinion gears 78 and 80, and ring gear 82
produces a rotary movement of the pointer 92 which is less than the
movement of the control knob 15 (FF 3; Ans. 5; Rebuttal Br. 6). As noted,
the Examiner is also correct that the recitation “planet wheel device” does
not preclude additional components. Nonetheless, the rejection of claim 1
based on application of Williams as set forth in the Examiner’s Answer is
unsustainable.
Having construed the “transmission device” to encompass the sun
gear 68, pinion gears 78 and 80, and ring gear 82 of Williams, the Examiner
cannot summarily assert that the recited “planet wheel device” is satisfied by
the exact same components of the “transmission device” because the
language of claim 1 makes clear that the planet wheel device cannot include
the entirety of the transmission device. In particular, claim 1 specifically
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requires the indicator element to be a planet wheel device. Hence, claim 1
would require the indicator element of Williams to be the recited planet
wheel device, which in accordance with the Examiner’s reading of claim 1
on Williams, is also the transmission device having a curved surface.
However, claim 1 further recites that “the indicator element moves along a
portion of the curved surface” of the transmission device. Under the
Examiner’s application of Williams, this limitation of claim 1 would require
movement of a structure along a curved surface of itself, which in our view,
is an untenable position.
Thus, in view of the above, the Examiner’s rejection based on
Williams is not sustained. The Appellant has shown that the Examiner erred
in rejecting independent claim 1, and claims 2-4 and 6-8 ultimately
depending therefrom, as anticipated by Williams.

Respondent’s argument regarding construction of “a transmission
device”
The Respondent argues that the recited “transmission device” of claim
1 should be subject to construction under 35 U.S.C. § 112, sixth paragraph,
because the claim does not recite structure that is sufficient to perform the
recited function (Respondent’s Br. 2). For the reasons discussed infra, we
decline to construe the limitation “transmission device” of claim 1 under 35
U.S.C. § 112, sixth paragraph.
Use of the word “means” in a claim creates a presumption that means-
plus-function construction applies. TriMed, Inc. v. Stryker Corp., 514 F.3d
1256, 1259 (Fed. Cir. 2008). Likewise:
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“‘a claim term that does not use ‘means’ will trigger the
rebuttable presumption that § 112 ¶ 6 does not apply.’” Lighting
World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1369 (Fed. Cir. 2002)). This presumption can be
rebutted “by showing that the claim element recite[s] a function
without reciting sufficient structure for performing that
function.” Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir. 2000)
(citing Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302
(Fed. Cir. 1999)). However, the presumption “is a strong one
that is not readily overcome.” Lighting World, Inc., 382 F.3d at
1358.

LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1372 (Fed.
Cir. 2006).
Because the Appellant did not use “means” to recite the transmission
device in the ‘652 patent, there is a strong presumption that the Appellant
did not intend to invoke 35 U.S.C. § 112, sixth paragraph.
In addition, “[m]eans-plus-function claiming applies only to purely
functional limitations that do not provide the structure that performs the
recited function.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir.
2005). However, independent claim 1 is not purely functional in that it
specifically recites “a transmission device having a curved surface”, where
the recited indicator element moves “along the curved surface to display a
gear selected by the actuating device.” Thus, the recited “curved surface” is
a structural recitation which at least partially enables the recited movement
of the indicator element “along a portion of the curved surface to delineate a
swept arc length that is always smaller than the swept arc length through
which an actuating element of the actuating device passes.”
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We acknowledge that the Federal Circuit has found “generic terms
‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote
sufficiently definite structure [to avoid means-plus-function treatment]. . ..”
Welker Bearing Company v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir.
2008) (citing Massachusetts Institute of Technology v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006)). However, the Federal Circuit has also
held that 35 U.S.C. § 112, sixth paragraph, did not apply to the term “detent
mechanism,” because “the noun '[d]etent' denotes a type of device with a
generally understood meaning in the mechanical arts, even though the
definitions are expressed in functional terms.” Id. (citing Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)).
Likewise, in the present appeal, a “transmission device” is not a
generic, structure-less term, but rather, denotes a type of device with a
generally understood meaning in the mechanical arts. There does not appear
to be any persuasive evidence to the contrary in the present record to
overcome the strong presumption that 35 U.S.C. § 112, sixth paragraph,
does not apply.
Therefore, in view of the above, we decline to construe the limitation
“transmission device” of claim 1 under 35 U.S.C. § 112, sixth paragraph as
urged by the Respondent.

CONCLUSION
1. The Appellant has shown that the Examiner erred in finding
that Williams describes an “indicator element being a planet wheel device”
which moves along a portion of the curved surface of a transmission device.
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2. The Examiner is correct in not applying 35 U.S.C. § 112, sixth
paragraph, in construing the limitation “a transmission device”.

ORDER
The Examiner’s rejection of claims 1-4 and 6-8 is REVERSED.

REVERSED

YRT

cc
Lisa J. Serdynski, Esq.
SRAM Corporation
1333 N. Kingsbury 4th Floor
Chicago, IL 60622

Third party requester:

James A. Deland, Esq.
DELAND LAW OFFICE
P.O. Box 69
Klamath River, CA 96050-0069