Ex Parte 6681652 et alDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200995000045 (B.P.A.I. Apr. 30, 2009) Copy Citation 1 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. Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 2 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 Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 3 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. Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 4 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). Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 5 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 Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 6 319, 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 Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 7 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 Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 8 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 Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 9 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: Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 10 “‘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.” Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 11 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. Appeal 2009-3429 Reexamination Control 95/000,045 Patent US 6,681,652 B2 12 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 Copy with citationCopy as parenthetical citation