Ex Parte 7559414 B2 et al

Patent Trials and Appeals Board

Mar 27, 2013

95001309 - (D) (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,309 02/05/2010 7559414 B2 SIC-09-005-1 9987
25871 7590 03/27/2013
SWANSON & BRATSCHUN, L.L.C.
8210 SOUTHPARK TERRACE
LITTLETON, CO 80120
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/27/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

SHIMANO INC.
Requester and Respondent

v.

SCRAM LLC.
Patent Owner and Appellant
____________

Appeal 2011-010923
Reexamination Control 95/001,309
Patent 7,559,414 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

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In an Order dated June 12, 2012 (2012-1146,-1147), the Federal Circuit
vacated the Board’s decision mailed September 29, 2011 and remanded the case to
the Board because the “[Board] erred in relying on a new ground of rejection in
regard to claims 2, 6, and 7.” In light of the Federal Circuit’s Order, and after
further consideration, the decision mailed September 29, 2011 is withdrawn.
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims 1-8 in an inter partes reexamination
of U.S. Patent No. 7,559,414. This is also a decision on the appeal by the Third-
Party Requester from the Patent Examiner’s decision not to adopt proposed
rejections of certain claims in the same inter partes reexamination proceeding. The
Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We
affirm-in-part and reverse-in-part.

BACKGROUND
The patent in dispute in this appeal is U.S. Patent No. 7,559,414 (hereinafter,
“the ‘414 patent”), which issued July 14, 2009. The claims are drawn to a master
cylinder for a bicycle hydraulic disc brake. A request for inter partes
reexamination under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the
‘414 patent was filed February 5, 2010 by a Third-Party Requester (Request for
Inter Partes Reexamination (“Request”)). The Third-Party Requester is Shimano,
Inc. (“Shimano”) (Shimano Appellant App. Br. 1, dated March 2, 2011). The
Patent Owner in this appeal is SRAM, LLC (“SRAM”) (SRAM Appellant App. Br.
1, dated March 7, 2011).

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References Relied on by the Examiner
Kawaguchi 4,779,482 Oct. 25, 1988
Noro et al. (“Noro”) 6,336,327 Jan. 8, 2002
Toya (“JP’992”) JP 54118992 Feb. 2, 1978
Rottenkolber (“DE’399”) DE 2922399 Dec. 18, 1980

Appeal of Adopted Rejections
SRAM appeals the Examiner’s decision to adopt the following rejections
(SRAM Appellant Br. 7):
1. Claims 1, 3 and 4 as anticipated under 35 U.S.C. § 102(b) by Japanese
Utility Model Registration No. 54-118992 (“JP’992”);
2. Claims 1, 3 and 4 as obvious under 35 U.S.C. § 103(a) over JP’992;
3. Claims 1, 3, and 4 as obvious under 35 U.S.C. § 103(a) over JP’992 and
German Auslegeschrift 2922399 (“DE’399’);
4. Claim 5 as obvious under 35 U.S.C. § 103(a) over JP’992 and Kawaguchi,
U.S. Patent No. 4,779,482 (“Kawaguchi”);
5. Claim 5 as obvious under 35 U.S.C. § 103(a) over JP’992, DE’399, and
Kawaguchi;
6. Claims 2, 6 and 7 as obvious under 35 U.S.C. § 103(a) over JP’992 and
Noro, U.S. Patent No. 6,336,327 (“Noro”);
7. Claims 2, 6 and 7 as obvious under 35 U.S.C. § 103(a) over JP’992,
DE’399, and Noro;
8. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP’992, Noro, and
Kawaguchi; and
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9. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP’992, DE’399, Noro,
and Kawaguchi.
Appeal of Non-Adopted Rejections
Shimano appeals the Examiner’s decision not to adopt the following
rejections (Shimano Appeal Br. 4-5):
10. Claim 5 as obvious under 35 U.S.C. § 103(a) over JP‘992 in view of
Kawaguchi;
11. Claims 2, 6, and 7 as obvious under 35 U.S.C. § 103(a) over JP‘992 and
Noro;
12. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP‘992, Noro, and
Kawaguchi;
13. Claim 5 as indefinite under 35 U.S.C. § 112;
14. Claim 5 as anticipated under 35 U.S.C. § 102 as anticipated by JP’992;
15. Claim 5 as obvious under 35 U.S.C. § 103(a) over JP’992, EP’152,
1

Terry, Sr.,
2
and DE’855;
3

16. Claim 5 as obvious under 35 U.S.C. § 103(a) over JP’392, DE’399,
EP’152, Terry, Sr., and DE’855;
17. Claim 8 as indefinite under 35 U.S.C. § 112;
18. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP’992 and Noro;
19. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP’992, Noro,
EP’152, Terry, Sr., and DE’855; and

1
Cornolti, EP 1160152 (“EP’152”) May 12, 2001.
2
Terry, Sr., US 5,813,501 (“Terry, Sr.”) September 29, 1998.
3
Ludwig, DE 3216885 (“DE’885”) November 17, 1983.

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20. Claim 8 as obvious under 35 U.S.C. § 103(a) over JP’992, DE’399,
Noro, EP’152, Terry, Sr., and DE’855.

Representative Claims
Claims 1 and 6 are representative and read as follows (emphasis added):
1. A master cylinder for bicycle hydraulic disc brake comprising;

a bar clamp attached to a master cylinder housing for attaching the
master cylinder housing to a bicycle handlebar along a longitudinal clamp
axis;

a cylinder wall associated with the master cylinder housing, the
cylinder wall comprising a cylinder interior and a cylinder exterior
extending axially of a cylinder axis, the cylinder having a first end and a
second end and the cylinder axis being non-parallel to the longitudinal clamp
axis;
a reservoir for hydraulic fluid comprising a first wall comprising only
a limited radial portion of the cylinder exterior and an elastomeric
diaphragm, wherein the cylinder axis and the longitudinal clamp axis lie
in a plane intersecting the first wall and the reservoir is symmetric
about the plane;
a port between the first and second cylinder ends in the first wall
proving fluid communication between the reservoir and the cylinder interior;
and
a piston within the cylinder having a seal operatively associated
therewith, the piston being movable along the cylinder axis between the first
and second cylinder ends, the seal preventing flow of hydraulic fluid from
the reservoir to the second cylinder end upon the seal advancing axially past
the port as the piston moves from the first toward the second cylinder end.

6. A symmetric master cylinder for a bicycle hydraulic disc brake
comprising:
a lever pivotally connected to a master cylinder housing such
that actuation of the lever defines an arc of lever actuation with all
points on the arc of actuation lying in a plane;
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a bar clamp attached to the master cylinder for attaching the
master cylinder housing to a bicycle handlebar along a longitudinal
clamp axis;
a cylinder wall associated with the master cylinder housing, the
cylinder wall comprising a cylinder interior and a cylinder exterior
extending axially of a cylinder axis, the cylinder having a first end and
a second end and the cylinder axis being substantially
perpendicular to the longitudinal clamp axis;
a reservoir associated with the master cylinder housing
comprising a first wall comprising only a limited radial portion of an
exterior surface of a cylinder within the housing and the reservoir
further comprising an elastomeric diaphragm, wherein the reservoir
is substantially symmetric about the plane;
a port in the first wall providing fluid communication between
an interior of the cylinder and the reservoir; and
a piston within the cylinder having a seal operatively associated
therewith, the piston being movable between first and second cylinder
ends along a cylinder axis between the first and second cylinder ends,
the seal preventing flow of hydraulic fluid from the reservoir to the
second cylinder end upon the seal advancing axially past the port as
the piston moves from the first toward the second cylinder end.

CLAIM INTERPRETATION
The claimed master cylinder for a bicycle hydraulic disc brake comprises a
“bar clamp” for attaching the cylinder to a bicycle handlebar. The cylinder
comprises “a reservoir for hydraulic fluid comprising a first wall comprising only a
limited radial portion of the cylinder exterior and an elastomeric diaphragm.” The
claim requires that “the cylinder axis and the longitudinal clamp axis lie in a plane
intersecting the first wall and the reservoir is symmetric about the plane.” The
proper interpretation of the term “reservoir” is in dispute in this appeal, particularly
whether “reservoir” means the entire reservoir structure or a part of it.

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Legal Principles
During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); see also
In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010).

Findings of Fact
The ‘414 patent discloses:
[FF1]
The reservoir may be defined in part by a portion of the cylinder
exterior. . . The reservoir may be defined in part by an elastomeric
diaphragm. . . . The portion of the cylinder exterior defining part of
the reservoir is preferably a convex surface . . .
(Col. 2, ll. 4-14.)

[FF2]
A second aspect of the present invention is a hydraulic fluid reservoir
for use with a master cylinder. The master cylinder includes a cylinder
in fluid communication with the reservoir. The reservoir consists of a
first wall and a sidewall extending from the first wall. An elastomeric
diaphragm forming a flexible wall is attached to the sidewall opposite
the first wall, with the first wall, the sidewall and the flexible wall
cooperating to define an interior of the reservoir.
(Col. 2, ll. 15-22.)

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[FF3]
Figure 2 is reproduced below:

[FF4]
FIG. 2 is an exploded view of the “backpack” reservoir 24 of the
master cylinder lever of FIG. 1. The backpack reservoir consists of a
reservoir chamber 28 defined in a rear facing portion of the master
cylinder housing 12. A cylinder wall 30 defining in part the cylinder
of the master cylinder housing 12 extends into the reservoir chamber
28 and defines in part a first wall 31. Extending through the cylinder
wall between the reservoir chamber 28 and the master cylinder is a
timing port 32 and a compensating port 34. . . A side wall 37 extends
from the first wall. A diaphragm 38 made of an elastomeric material
such as silicon rubber is made to overlay the side wall 37 and cover
the reservoir chamber 28. Thus, the first wall 31, the side wall 37 and
the diaphragm 38 define the reservoir chamber 28. The diaphragm 38
has an expansion protrusion 40 extending therefrom opposite the
reservoir chamber. A reservoir frame 42 is configured to receive the
periphery of the diaphragm 38 to maintain a tight seal between the
diaphragm 38 and the reservoir chamber 28. This seal is promoted
and assembled relationship maintained by four screws 44 received in
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the corner holes of the reservoir frame 42 and diaphragm 38 and
threadably engaged with corresponding holes in the master cylinder
housing 12. A vanity cover 46 snap fits over the diaphragm and frame
to both provide an aesthetic appearance and to protect the diaphragm
38.
(Col. 4, ll. 15-40.)

[FF5] Figure 10 is reproduced below:

[FF6] Figure 10 shows “reservoir housing 208 covers a hydraulic fluid
reservoir 210” (col. 7, ll. 15-17).
[FF7] Figure 15 is reproduced below:
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[FF8]
In the embodiment illustrated in FIG. 15, this geometry is facilitated
by locating the reservoir 208 and the cylinder 222 of the master
cylinder lever housing generally parallel to the clamp axis 282, and
the pivot 39 mm from the clamp axis.
(Col. 10, ll. 31-35.)

[FF9]
The cylinder axis and the longitudinal clamp axis both lie in a plane
substantially bisecting the first wall [of the reservoir].
(Col. 2, ll. 42-44.)

Analysis
The issue in interpreting the phrase “the “reservoir is symmetric about the
plane” is whether “reservoir” means the entire structure, including the exterior and
interior parts, or whether it can be properly interpreted to mean a “part” of the
reservoir.
The reservoir is described in the ‘414 patent as holding hydraulic fluid
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(FF2). The reservoir is in fluid communication with the brake’s master cylinder
(FF2). Figure 2 of the ‘414 patent shows an exploded view of the reservoir (FF4).
In describing Figure 2, the ‘414 patent refers to specific parts of the reservoir 24:
reservoir chamber 28, a first wall 31, and a side wall 37 (FF4). The patent
discloses that the “first wall 31, the side wall 37 and the diaphragm 38 define the
reservoir chamber 28” (FF4). This description is consistent with other disclosure
in the ‘414 patent describing the separate structures which define the reservoir as a
whole (FF1 & FF2). Thus, the ‘414 patent uses the term “reservoir” to refer to the
entire structure which is composed of parts, including walls and a diaphragm (FF1,
FF2, & FF4). When a specific part of the reservoir is intended, the part is
specifically named. Based on this disclosure, the term “reservoir” would be
interpreted by a person of ordinary skill in the art to mean the “whole” reservoir,
including its interior and exterior portions.
Shimano contends that “reservoir” is not limited to the whole structure, but
is properly interpreted to mean a part or portion of it, including only the outside
profile or an interior part of the reservoir chamber (Shimano Resp’t Br. 7-8, dated
March 30, 2011). Shimano supports their interpretation as follows:
• “There simply is not enough detail of the inside of each reservoir to know
whether the entire reservoir is symmetrical or not.” (Shimano Resp’t Br. 6.)
• The ‘414 patent makes a distinction between “reservoir” and “reservoir
chamber” (id.)
• “Reference number (210) even points to the outside surface of the
reservoir.” (Id. at 7.)
• “Claim 1 does not recite ‘the whole reservoir chamber is symmetric about
the plane,’ nor does claim 1 recite what parts of the reservoir are symmetric about
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the plane. Thus, it is entirely proper to interpret the outside profile of the reservoir
as a whole . . . as shown in Exhibit C, as satisfying the requirement that ‘the
reservoir is symmetric about the plane” (id.)
Shimano’s analysis is not supported by a preponderance of the evidence.
Figure 2 shows an exploded view of a backpack reservoir (FF4). The cylinder wall
30, side wall 37, and diaphragm 38 are sufficiently depicted (FF3 & FF4) such that
the skilled worker would have recognized that the reservoir’s interior chamber is
symmetric about the plane defined in the claims. The ‘414 patent expressly states
that the cylinder axis and the longitudinal clamp axis both lie in a plane
substantially bisecting the first wall of the reservoir (FF9), providing further
support for the corresponding claim limitation. Shimano has not identified what
part of Figure 2, and the description of it, is ambiguous or lacking detail such that
the skilled worker would not have been able to visualize the exterior and interior
surfaces of the master cylinder.
We agree that the patent makes a distinction between “reservoir” and
“reservoir chamber” (Shimano Resp’t Br. 6). However, this distinction supports
the interpretation that, when the term “reservoir” is used, the entire structure is
meant, and when a part of the reservoir is referred to, the part (e.g., “chamber”) is
explicitly named. In the description of Figure 2, the inventors described a
“backpack reservoir” comprising a reservoir chamber, side walls, and reservoir
frame (FF4), all indicating that the reservoir is a complete structure composed of
these various specifically named parts.
Shimano contends that “reservoir” refers to the outside surface because
reference number 210 points to it (Resp’t Br. 7). This position is not supported by
the evidence. In Figure 10, reference number 210 points toward the exterior of the
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reservoir, but the written description of the ‘414 patent defines the reference
number as the “hydraulic fluid reservoir,” and not only the outside or exterior
surface (FF6). Thus, it is clear that 210 refers to the entire reservoir and not just its
exterior surface as stated by Shimano. Figure 15 of the ‘414 patent also depicts the
reservoir, where reference number 208 points toward the exterior surface (FF7 &
FF8) as a way indicating the entire reservoir.
Based on the foregoing facts, the requirement that the reservoir be
symmetric about a plane defined by the cylinder axis and the longitudinal axis
would be understood in the light of the written description to mean that the entire
reservoir – including its interior and exterior surfaces – is symmetrical about the
plane.
APPEAL OF ADOPTED REJECTIONS

REJECTION 1: ANTICIPATION BY JP’992
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
JP’992.
Issue
The issue in this rejection is whether JP’992 describes a master cylinder
comprising
a reservoir for hydraulic fluid . . . , wherein the cylinder axis and the
longitudinal clamp axis lie in a plane intersecting the first wall and the
reservoir is symmetric about the plane.

Findings of Fact
[FF10] Figure 2 of JP’992 is reproduced below:

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[FF11] Figure 2 shows a bicycle hydraulic brake with reservoir 14 and screws 16.

Analysis
Claim 1 is directed to a master cylinder for a bicycle comprising a reservoir
for hydraulic fluid. The claim requires that the reservoir is symmetric about a
plane formed by “the cylinder axis and the longitudinal clamp axis . . . intersecting
the first wall.” The Examiner found that, as shown in Figure 2 (FF10 & FF11),
this limitation is met by the brake cylinder described in JP’992:
As broadly construed, the reservoir [of JP’992] is symmetric about a
plane in that the rectangular shape of the outer surface of reservoir
(14) is attached by two screws which are at diagonal corners.
Therefor[e] the reservoir is symmetric axially between the mounting
screw holes in equal and opposite directions.
(Answer 4-5.)
Shimano also contends that JP’992 describes a symmetrical reservoir:
(1) symmetry of the outer surface of reservoir (14), and (2) symmetry
of the interior of the reservoir between the mounting screw holes.
(Shimano Resp’t Br. 6, dated March 30, 2011)
The Examiner’s rationale fails because, while the reservoir is symmetrical
around a diagonal plane formed by screws 16 as depicted Figure 2 of JP’992, the
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cylinder axis and longitudinal axis intersecting the first wall of the reservoir do not
lie in this plane as required by claim 1.
Shimano’s arguments also fail because they are based on an incorrect
interpretation of claim 1. The term “reservoir,” as properly interpreted, means the
entire reservoir structure. Shimano contends there is symmetry on the outer
surface of the reservoir (Shimano Resp’t Br. 6). However, the claim requires that
the symmetry be about the whole reservoir. This condition is not satisfied because
the interior surface about the plane formed by “the cylinder axis and the
longitudinal clamp axis . . . intersecting the [reservoir’s] first wall” contains two
screw holes (16) positioned diagonally with respect to one another at opposite
corners of the reservoir (FF10). The diagonal positioning of the screw holes means
that the reservoir is not symmetrical about the relevant plane.
Alternatively, Shimano also contends that there is symmetry of the interior
of the reservoir between the mounting screws. Shimano depicts this region in
Figure 2 of JP’992 as follows:

The hatched area of Figure 2 shows the hatched portion of the reservoir
which Shimano contends meets the symmetry requirement of claim 1. The hatched
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region in between screws 16 does not constitute the whole reservoir as required by
the claim, and not even the whole interior of the reservoir, but only a portion of it.
Consequently, Shimano’s second argument also fails.
In view of the foregoing, we reverse Rejection 1 of claims 1, 3, and 4 as
anticipated by JP’992.

REJECTION 2: OBVIOUSNESS OVER JP’992
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of JP’992.
The Examiner adopted Shimano’s proposed rejection of adding two screws
to reservoir 14 of the master cylinder described by JP’992 (Answer 5). In the
Request for Inter Partes Reexamination, Shimano reasoned:
the use of four screws, one in each corner [of the reservoir 14], would
be a predictable modification because then the reservoir cover would
be pressed down more evenly, thereby reducing the risk of leaks and
warping of the reservoir cover over time. The resulting structure
would produce a reservoir wherein the entire reservoir is symmetric
about the plane.
(Request 17.) The Examiner further stated that the “it would have been obvious to
one of ordinary skill in the art to have utilized a screw at each corner of the
reservoir to better attach the reservoir cover.” (Answer 5).
JP’992 describes an embodiment with reference to the drawings, particularly
Figure 2 depicted above.
The reservoir tank 14 has an overall approximately square shape and is
elongatedly integrally formed, adjacent to the bracket 2, with the
cylinder main body 1. In addition, a cap 15 of the reservoir tank 14 is
structured so as to be detachably fastened to a main body of the reservoir
tank 14 by a screw 16.
JP’992, p. 5-6.
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There is insufficient evidence that reservoir cover would have been
susceptible to leakage and warping as alleged by Shimano in the Request. See also
Shimano Respondent Br. 10. Arguments of counsel cannot take the place of
evidence lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588,
595 (Fed. Cir. 1997). As noted above, both Shimano and the Examiner speculated
that the cover needed “better” attachment, but provide no objective evidence or
articulate a persuasive rational underlying this assertion in support. Limited
evidence appears to indicate the contrary with respect to using only two screws.
See JP ‘992, Figure 2; see also DE’399 using two screws. Neither the Examiner
nor Shimano pointed to disclosure of the “problem” of warping and leakage, but
rather simply speculated about it. The Examiner did not support his reasoning with
adequate factual findings that the cover required better attachment to prevent leaks
and warping or that there was a leakage or warpage concern that needed to be
addressed.
In addition to this, there is not adequate evidence that the skilled worker
would have made the additional screws symmetric about the reservoir if added.
Shimano’s rationale attempts to explain why it would have been obvious to have
used four screws to secure the cap 15 to the master cylinder, but not why the
additional screws would be placed in such a way to make the reservoir symmetric
about the plane as required by the claim. For example, if the third and fourth
screws proposed by Shimano and the Examiner were offset from each of the
corners, or attached in such way that they did not impinge upon the volume of the
reservoir as do screws 16, the reservoir would not be symmetrical about the plane
intersecting the recited first wall of the cylinder as required by the claim (“cap 15”
of JP‘992 of Fig. 2).
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The Examiner stated that it would have been obvious to have placed screws
in each corner, but did not provide evidence or explain why a symmetrical
arrangement about the plane intersecting the first wall would have been arrived at
by one ordinary skill in the art. As indicated above, the screws could be placed in
other configurations that could equally secure the cover and not result in a
symmetrical arrangement as required by the claim.
As stated in the ‘414 patent, providing a symmetric reservoir permits it to be
mounted on either the right or left portion of a handle bar without effecting
operation of the master cylinder lever by a user (‘414 patent, col. 2, l. 59 to col. 3,
l. 2). In our view, the Examiner has used impermissible hindsight to arrive at this
configuration.
Thus, in view of the above, we reverse the rejection of claim 1, and
dependent claims 3 and 4.

REJECTION 3: OBVIOUSNESS OVER JP’992 & DE’399
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) over JP’992 and
DE’399.
Issue
The issue in this rejection is whether it would have been obvious to the
ordinary skilled worker to have made a brake master cylinder where “the cylinder
axis and the longitudinal clamp axis lie in a plane intersecting the first wall [of the
cylinder] and the reservoir is symmetric about the plane” as recited in claim 1.
The Examiner adopted Shimano’s proposed rejection that it would have
been obvious to the ordinary skilled worker to have substituted the symmetrical
reservoir taught by DE’399 for the reservoir described in JP’992 because such
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components were known to be “interchangeable” and “to simplify manufacturing
and to reduce overall costs of the lever assembly.” (Request 22; RAN 5-6.)
Shimano relied on Figure 5 of DE’399 as showing a symmetrical reservoir.

Analysis
SRAM contends that the reservoir 7 of DE’399 “does not even intersect the
Required Plane of Symmetry.” (App. Br. 15). SRAM also contends that the
reservoirs in JP’992 and DE’399 “are not equivalent because DE ‘399 and JP
‘992 each teach a distinct solution to providing a lever that can be placed on either
side of a handle bar.”
These arguments are not persuasive. First, the Examiner did not find that
DE’399 described the same plane of symmetry as required by the claim. Rather,
the claimed plane of symmetry is described in JP’992. When the symmetrical
reservoir of DE’399 is substituted for the asymmetric reservoir of JP’992, the
skilled worker would have positioned it according to the teachings in JP’992,
meeting the symmetry requirement of the claim.
SRAM also contends that the reservoirs in JP’992 and DE’399 are not
equivalent because the cited patents were solving different problems. This
argument is also not persuasive. The reservoirs, in fact, perform the same function
in each of the cited publications of providing fluid to the brake cylinder. Even
were it true that the publications address different issues in the art, the publications
each generally describe the configuration and operation of hydraulic braking
assemblies. A skilled worker would have viewed their respective teachings
involving the reservoirs of the assemblies as reasonably pertinent to the problem
addressed by the claims.
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For the foregoing reasons, we affirm the rejection of claim 1 as obvious in
view of JP’992 and DE’399.
Claim 3
Claim 3 depends on claim 1, and further recites that “the first wall faces a
direction a lever handle pivotally attached to the master cylinder housing extends
away from the master cylinder housing.” We interpret this claim limitation to
mean that the lever handle “extends away” from the first wall at rest, such that
when activated, it is moved toward the first wall. This feature is met by lever
handle 8 of JP’992 as shown in Figure 2, reproduced below, where the lever at rest
points downwardly and extends away from the wall of reservoir tank 14 [FF12].

Figure 2 shows lever handle 8 of JP’992 as shown above, where the lever at
rest points downwardly and extends away from the wall of reservoir tank 14
[FF13]. Reference numeral 17 refers to the packing. This configuration appears to
the same configuration shown in Figures 3 and 23 of the ‘414 patent.
We have considered SRAM’s argument that the entire lever handle must
extend away from the first wall, but do not find it supported by sufficient evidence.
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As shown above (FF12 & FF13), the entire handle could be described, when giving
the claims its broadest reasonable interpretation, as extending away from the wall
when in its resting position, the position necessary for the lever to perform its
function.
For the foregoing reasons, we affirm the rejection of claim 3 as obvious in
view of JP’992 and DE’399.
Claim 4
Claim 4 depends on claim 1 and further comprises “a hydraulic line having
an opening into the cylinder interior which is substantially opposite the first wall.”
The Examiner pointed to the hydraulic line 13 shown in Figure 2 (FF12) as
meeting the claim limitation.
This determination is not suitably supported by the evidence. Hydraulic 13
faces in a perpendicular direction to the reservoir’s first wall (packing 17) as
defined by the claim (FF12). It is not reasonable to read the term “substantially
opposite” to mean an orientation which is perpendicular and offset by 90° from the
first wall because such an interpretation ignores the requirement that the line be
“opposite” the wall. We thus reverse the rejection.

Summary
We affirm the obviousness Rejection 3 of claims 1 and 3, but reverse
Rejection 3 of claim 4.

REJECTION 4
Claim 5 is rejected under 35 U.S.C. 103 as obvious in view of JP’992 and
Kawaguchi. Claim 5 depends on claim 1. The Examiner relied on the teachings of
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Kawaguchi only to account for limitations added by claim 5 and not to make up for
the deficiencies noted above with respect to the application of JP’992’s teachings
to claim 1. We reverse this rejection for the same reasons we reversed the
rejection of claim 1 under Grounds 1 and 2.

REJECTION 5
Claim 5 stands rejected as obvious under 35 U.S.C. § 103(a) over JP’992,
DE’399, and Kawaguchi.
Claim 5 depends on claim 1, and further requires a “means for varying an
engagement point of a lever operatively associated with the piston traveling along
the cylinder axis within the cylinder.” The Examiner found that Kawaguchi met
the claimed limitation:
Kawaguchi shows a means (59) that is operatively associated with a
piston (45) traveling along a cylinder axis within a cylinder (42). As
circular nut (24) is turned, the rest position of lever (44) is changed to
accommodate various hand sizes. See col. 1, lines 7-8. As a result, the
rotational position at which lever (44) begins to push piston (45) also
changes, thereby varying the rotational position at which lever (44)
reaches the engagement point.
(Answer 6.)
SRAM contends that the claim requires that the engagement point contacted
by the lever varies, while in Kawaguchi, it is the rest position of the lever which is
varied, not the engagement point (SRAM Appellant App. Br. 15-16).
SRAM’s position is supported by a preponderance of the evidence.
Kawaguchi shows a reach adjustment mechanism in which rotation of the circular
nut 24 varies the rest position of the lever 4, 44 for the purpose of changing the
distance D between the lever 4, 44 and handle bar 1, as shown in Figures 1 and 4
of Kawaguchi (Kawaguchi, col. 1, ll. 60-65; col. 2, ll. 56-64; col. 3, ll. 20-22)
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[FF14]. Varying the reach of the lever has no effect on the “engagement point”
where the lever pushes against the master cylinder end 45 (col. 3, ll. 14-19; Figures
4 & 6) [FF15].
The “engagement point” is defined in the ‘414 patent at column 9, lines 65-
column 10, line 3:
As used herein, the “engagement point” means a point along the arc of
lever actuation where the pads of a caliper operatively associated with
the master cylinder lever begin compressing a disk therebetween. In
other words, a point where the lever handle drives the piston train
against operative fluid resistance [FF16].
The “engagement point” is thus the point where the lever makes contact with
the piston. Kawaguchi does not change the “engagement point” as that phrase
would be understood in the context of the ‘414 patent (FF16), but rather
Kawaguchi varies the distance between the angle at which the lever 4, 44 contacts
an engagement point by adjusting circular nut 24 on the lever side (FF14).
Varying the reach as provided in Kawaguchi moves the entire arc of lever
actuation, but the “engagement point” remains constant at the same point of the arc
of lever actuation.
Shimano contends that Kawaguchi is equivalent in structure and function to
the claimed structure (Shimano Resp’t Br. 12). However, equivalency is not the
issue. The issue is whether the claimed structure recited in claim 5 is described or
suggested by Kawaguchi. Shimano has not provided a sufficient explanation that a
“means for varying an engagement point of a lever operatively associated with the
piston traveling along the cylinder axis within the cylinder” is described or
suggested by Kawaguchi.
For the foregoing reasons, we reverse Rejection 5 of claim 5 as obvious over
JP’992, DE’399, and Kawaguchi.
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REJECTION 6
Claims 2, 6, and 7 are rejected under 35 U.S.C. § 103 as obvious over
JP’992 in view of Noro.
Claim 2 is directed to the master cylinder of claim 1, “further comprising the
cylinder axis being substantially perpendicular to the longitudinal clamp axis.”
The Examiner relied on the teachings of Noro only to account for limitations added
by claim 2 and not to make up for the deficiencies noted above with respect to the
application of JP ‘992’s teachings to claim 1 (Answer 7). We therefore reverse the
rejection of claim 2 for the same reasons we reversed the rejection of claim 1 in
Ground 2.

Claims 6 and 7
Claim 6 is an independent claim; claim 7 depends on it.
A. In regard to claim 6, SRAM contends “Claim 1 includes the limitation
‘the cylinder axis and the longitudinal clamp axis lie in a plane.’ This same
limitation appears in claim 6.” SRAM App. Br. 17. We disagree. Claim 6 refers
to a different plane: “a lever pivotally connected to a master cylinder housing such
that actuation of the lever defines an arc of lever actuation with all points on the
arc of actuation lying in a plane.” The reservoir is said to be “substantially
symmetric about the plane.” The only antecedent basis for “plane” is the plane
described for the lever. This is a different plane from the plane recited in claim 1.
Thus, claim 6 is not distinguishable from the prior art on the same basis as was
claim 1.
B. Claim 6 also recites “the cylinder axis being substantially perpendicular
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to the longitudinal clamp axis.” The Examiner found this limitation to be
described by Noro, but SRAM challenges this finding. The proper interpretation
of this limitation is at issue. Thus, we first must interpret it before comparing the
claims to the prior art.

Claim interpretation: “substantially perpendicular”
Shimano contend that the term “substantially perpendicular” does not
require the cylinder axis to intersect with the longitudinal axis, but only to be
oriented in a perpendicular direction from each other (Shimano Resp’t Br. 13).
SRAM contends that “perpendicular” requires the axis lines to intersect (SRAM
Appellant Br. 17-18).
The preponderance of the evidence supports SRAM’s interpretation that
perpendicular axes must intersect with one another. The McGraw-Hill Dictionary
of Scientific and Technical Terms
4
defines “perpendicular” as follows: “Geometric
objects are perpendicular if they intersect in angle of 90°.” [FF15]
Shimano did not provide credible evidence to support their non-intersecting
construction of “perpendicular.” Shimano identifies structures in the ‘414 patent
which they contend define cylinder axes which do not intersect the clamp axis, but
Shimano does not draw or make any attempt to clarify what they consider to be the
non-intersecting axis (Shimano Resp’t Br. 13). Instead, we find several
embodiments in the ‘414 patent which show the cylinder axis perpendicular and
intersecting with clamp axis.
First, the ‘414 patent explicitly discloses embodiments in which “a cylinder

4
Exhibit A of SRAM Appellant App. Br. McGraw Hill Dictionary of Scientific
and Technical Terms 1479 (5
th
ed. 1994).
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wall associated with the master cylinder housing extending along the cylinder axis.
The cylinder axis is not parallel to the longitudinal clamp axis.” ‘414 patent, col.
2, ll. 35-38. The patent also discloses “the cylinder axis is substantially
perpendicular to the longitudinal clamp axis.” Id. at col. 2, ll. 44-45. This
description is reflected in the following figures.
[FF16] Figure 7 of the ‘414 patent is reproduced below.

[FF17] Figure 7 shows a side view of an embodiment of the ‘414 patent,
where numeral 282 is the longitudinal clamp axis. The cylinder axis runs
vertically through the center of the cylinder.
[FF18] Figure 2 shows this same configuration:
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Figure 2 shows the reservoir cover 18 on the cylinder housing 12. The
cylinder axis runs up and down the length of the cylinder (generally vertically in
the drawing) and intersects with the longitudinal clamp axis which runs lengthwise
through the clamp 14 (generally horizontally in the drawing).
Both drawings taken together provide sufficient evidence of perpendicularly
intersecting cylinder and clamp axes, the drawings illustrating that the cylinder
axis extends from the handle bar 280 along a radius thereof, and thus
perpendicularly intersecting the longitudinal clamp axis.
Shimano also contends that even if the perpendicular recitation requires the
axes to intersect, “geometric objects that are oriented 90° relative to each other but
don't quite intersect could be interpreted to be ‘substantially[’] perpendicular.”
(Shimano Resp’t Br. 13.) This argument is not persuasive. Configuring the
longitudinal clamp axis to be offset (e.g., in a leftward or rightward direction) from
the cylinder axis would shift the clamp off the body of the hydraulic brake and
would make no logical sense. Rather in the context of the ‘414 patent, the ordinary
skilled worker would have understood “substantially perpendicular” to mean that
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the angle between the axis do not have to intersect at exactly 90°, but can deviate
slightly from it.
Findings of Fact
Noro
[FF19] Figure 2 of Noro is reproduced below:

[FF20] Figure 2 of Noro shows a master cylinder device, including a
cylinder body 5 of the master cylinder 4, and reservoir tank 15 (col. 2, ll. 20-21 &
44-46).
[FF21] “[T]he axis of the cylinder body [5] is arranged substantially
orthogonal to the vertical plane inclusive of the axis of the bar handle” (col. 1, ll.
43-45).
[FF22]
As shown in FIGS. 1 and 2, a cylinder body 5 of the master cylinder 4
is securely installed on the bar handle 2 in such a manner that, below
the axis X of the bar handle 2, the axis Y thereof is substantially
orthogonal to a vertical plane V including the axis X of the bar handle
2, and the cylinder body 5 protrudes forwards of the vehicle from the
bar handle 2.
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(Col. 2, ll. 20-26).

Issue
The Examiner found that Noro describes the “cylinder axis being
substantially perpendicular to the longitudinal clamp axis” as recited in claim 6 and
determined that it would have been obvious to the ordinary skilled worker “to have
mounted the master cylinder perpendicular to the handlebar in view of the teaching
of Nora so as to decrease the axial extent of the lever assembly to facilitate the
mounting of other components to the handlebar.” (RAN 7-8.) SRAM disputes this
finding:
Noro does not show a cylinder axis Y that is perpendicular to the
handle bar axis X because the cylinder axis Y and the handle bar axis
X do not intersect. (see Noro, Fig. 2, which is reproduced below. Note
that the X axis is perpendicular to the plane of the page and thus
appears as a dot along the plane V).
(SRAM Appellant App. Br. 17.)
Analysis
The X-axis shown in Noro (FF20-FF22) is the longitudinal clamp axis. This
axis projects out of the paper. The cylinder axis, as we have interpreted it in the
context of the ‘414 patent, is the Y-axis which passes lengthwise though the center
of the cylinder (FF22). The X-axis does not intersect the Y-axis, but projects
straight out above the Y-axis and without intersecting it.
Because the Examiner’s rejection was based on an improper interpretation of
claim 6, we are compelled to reverse the rejection of claim 6 as obvious over
JP’992, and Noro.
5
Claim 7 depends on claim 6. We reverse the rejection of claim

5
In the Decision vacated by the Federal Circuit, we had affirmed the rejection of
claim 6 based on prior art that included JP’992 and Noro, using reasoning and
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7 for the same reason as we reverse the rejection of claim 6.

REJECTION 7
Claims 2, 6, and 7 are rejected under 35 U.S.C. § 103 as obvious over
JP’992, DE’399, and Noro.

Claim 2
Claim 2 is directed to the master cylinder of claim 1, “further comprising the
cylinder axis being substantially perpendicular to the longitudinal clamp axis.” We
found that claim 1, which includes recitation of a particularly oriented master
cylinder, would have been obvious in view of JP’992 and DE’399. See supra
Rejection 3. The Examiner relied upon Noro for teaching the limitation added by
claim 2. As noted above in connection with our discussion of Rejection 6, the
limitation added by claim 2 is also present in claim 6, and we found that this
limitation was not met by Noro. DE’399 was not said by the Examiner to make up
for this deficiency. We therefore reverse the rejection of claim 2 for the same
reason we reverse the rejection of claim 6 over JP’992 and Noro.
Claims 6 and 7, as discussed above, also contain the limitation of “the
cylinder axis being substantially perpendicular to the longitudinal clamp axis.” We
found that this limitation was not met by Noro. DE’399 was not said by the
Examiner to make up for this deficiency. We therefore reverse the rejection of
claims 6 and 7 for the same reason we reversed the rejection of claim 6 over
JP’992 and Noro.

factual findings that were different from the Examiner’s. Upon reconsideration,
we have withdrawn our findings and reverse the rejection.
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REJECTION 8
Claim 8 stands rejected as obvious under 35 U.S.C. § 103(a) over JP’992, Noro,
and Kawaguchi. Claim 8 depends on claim 6, and further recites “means for
varying an engagement point of a lever operatively associated with the piston
traveling along the cylinder axis within the cylinder.” In Rejection 5, we
determined that this same limitation was not met by Kawaguchi. With respect to
Rejection 8, Kawaguchi is also alleged to account for the above-noted feature. We
disagree. Consequently, we reverse the rejection of claim 8 for the same reasons
as those advanced in connection with Rejection 5.

REJECTION 9
Claim 8 stands rejected as obvious under 35 U.S.C. § 103(a) over JP’992,
DE’399, Noro, and Kawaguchi.
Claim 8 depends on claim 6, and further recites “means for varying an
engagement point of a lever operatively associated with the piston traveling along
the cylinder axis within the cylinder.” In Rejection 5, we disagreed with the
Examiner and Shimano, and determined that this same limitation was not met by
Kawaguchi. We are of the same view with respect to Rejection 9 of claim 8.
Consequently, we reverse the above-noted rejection of claim 8 for the same
reasons.

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CROSS-APPEAL OF NON-ADOPTED REJECTIONS
NON-ADOPTED REJECTIONS 10, 11, AND 12
Examiner did not adopt Rejections 10, 11, and 12 because they involved the
same prior art cited in adopted Rejections 4, 6, and 8 and were thus considered by
the Examiner to be duplicative. Shimano contends that the Examiner erred in not
adopting the rejections because the rationales for rejections 10, 11, and 12 were
different from Rejections 4, 6, and 8, despite citing the same prior art.

Rejection 10
Rejection 10 proposed to reject claim 5 over JP’992 in view of Kawaguchi.
Shimano states that Rejection 10 corresponds to SNQ2. Shimano App. Br. 5.
Shimano generally urges that Rejection 10 should have been adopted by the
Examiner “based on a predictable variation of the device disclosed in JP ‘992 in
view of Kawaguchi[.]” (Shimano App. Br. 5) (emphasis in original).
We reversed Rejection 4 of claim 5 over JP’992 and Kawaguchi because the
cited publications did not teach or suggest the reservoir as “symmetric” about a
plane defined by “the cylinder axis and the longitudinal clamp axis . . . intersecting
the first wall” of the reservoir. Supra at p. 21. We were not persuaded the skilled
worker would have been led to modify JP’992 to make its reservoir symmetric, and
Kawaguchi was not relied upon by the Examiner to make up for this deficiency.
The general and ambiguous “predictable variation” rationale for the
unpatentability of the claims set forth by Shimano does not adequately explain how
Kawaguchi describes the symmetric limitation that we found lacking from JP’992.
Request for Inter Partes Reexamination, p. 14. We also found that JP’992 does not
reasonably suggest the claimed symmetric limitation. Thus, we affirm the decision
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to not adopt Rejection 10 for similar reasons as for Rejections 2 and 4. Supra at
pp. 16-18 & 21-22.

Rejection 11
Shimano states that Rejection 11 corresponds to SNQ9. Shimano App. Br.
6. Rejection 11 is of claims 2, 6, and 7 over JP’992 in view of Noro.
As with Rejection 10 above, Shimano offers only a general statement in their
Brief based on a theory of “predictable variation” as to why Rejection 11 should
have been adopted by the Examiner. (Id.)
Claim 2
The rationale for the unpatentability of the claims set forth by Shimano in
SNQ9 is “that the use of four screws, one in each comer, would be a predictable
modification because then the reservoir cover would be pressed down more evenly,
thereby reducing the risk of leaks and warping of the reservoir cover over time.”
Request for Inter Partes Reexamination, p. 30. We found this rationale
unpersuasive for the rejection over JP’992 alone because 1) the screws could be
placed in other configurations that could equally secure the cover and not result in
a symmetrical arrangement as required by the claim; and 2) there was not adequate
factual findings that the cover required better attachment to prevent leaks and
warping or that there was a leak or warp problem that needed to be addressed. The
Requester did not explain how Noro made up for this deficiency. Accordingly, we
conclude that the Examiner did not err in declining to adopt the rejection of claim 2
over JP’992 and Noro.

Claims 6 and 7
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The rationale for unpatentability of claims 6 and 7 as set forth by Shimano in
SNQ9 is it “would have been obvious to one of ordinary skill in the art to orient the
master cylinder axis in JP '992 substantially perpendicular to the longitudinal
clamp axis as suggested by Noro, et al to decrease the axial extent of the lever
assembly to facilitate the mounting of other components to the handlebar.” Request
for Inter Partes Reexamination, p.33. This is similar to the rationale for Rejection
6 that we found unpersuasive. For similar reasons, we conclude that the Examiner
did not err in declining to adopt proposed Rejection 11 of claims 6 and 7.
Accordingly, we sustain the Examiner’s decision to not reject claims 6 and 7
over JP ‘992 in view of Noro.

Rejection 12
Rejection 12 proposes that claim 8 should be rejected over JP’992, Noro,
and Kawaguchi. Shimano states that Rejection 12 corresponds to SNQ10.
Shimano App. Br. 6. Once again, Shimano’s basis for urging that Rejection 12 be
adopted is predicated ambiguously on a “predictable variation” theory. (Id.)
We reversed Rejection 8 of claim 8 over JP’992, Noro, and Kawaguchi
because of its dependence on claim 6, which we reversed for the reason described
above. Because the rationales are similar, we conclude that Examiner did not err
in declining to adopt Rejection 12 of claim 8.

NON-ADOPTED REJECTIONS 13 & 17
Shimano proposed a rejection of claims 5 and 8 as indefinite under 35
U.S.C. § 112, second paragraph. The Examiner did not adopt the rejection because
claim 5 was not amended during the reexamination and, only new or amended
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claims are examined for compliance with section 112. Shimano contends that the
Examiner erred in not adopting the rejection because, while text was not added or
deleted from the claims, the claims were “amended by argument.” (Shimano
Appellant App. Br. 7).
As recognized by Shimano, it is clear from Patent and Trademark Office
rules and procedures that section 112 can be invoked when claims are added or
amended by text during a reexamination proceeding
37 C.F.R § 1.906 states:
(a) Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and, with
respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112.

MPEP §2658(II) states:
Where new or amended claims are presented or where any part of the
disclosure is amended, the claims of the reexamination proceeding are
to be examined for compliance with 35 USC 112.
However, there is no basis for examining compliance with section 112 for
those claims which were part of the original patent and whose text is identical to
that in the original patent. According to 35 U.S.C. § 311(a), a request for inter
partes reexamination may be made “on the basis of any prior art cited under the
provisions of section 311.” The determination by the Director to order inter partes
reexamination arises from questions of patentability raised by the request (35
U.S.C. §§ 312 and 313) and is therefore also restricted to prior art for unamended
claims. See 37 C.F.R. § 1.906(a).
There is also no statutory or legal foundation for Shimano’s contention that
claims can be amended by arguments made by the Patent Owner during
reexamination. 37 C.F.R. 1.530(d), which describes the process for making
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amendments in a reexamination proceeding, refers to “specified changes” to a
claim, indicating that an “amendment” requires an alteration to the text of a claim.
The closest support we can find for Shimano’s position is the doctrine of
“prosecution disclaimer” or “prosecution history estoppel” where statements made
by a Patent Owner during prosecution of the patent can limit the scope of the
claim, once issued in a patent. Invitrogen Corp. v. Clontech Laboratories Inc., 429
F3d 1052, 1078 (Fed. Cir. 2005). However, during reexamination, claims are
given their broadest reasonable interpretation as they would be understood in the
context of the specification. In re ICON Health & Fitness, Inc., 496 F.3d at 1379.
The estoppel or disclaimer doctrine does not operate in the same way during
reexamination proceedings. As such, we agree with the Examiner’s determination
that “amendment by argument” is not the type of amendment which expands the
scope of reexamination to issues related to section 112.

NON-ADOPTED REJECTION 14
Shimano proposed a rejection of claim 5 based on JP’992. Claim 5 is
dependent on claim 1. We concluded that JP’992 does not anticipate or render
obvious claim 1. Claim 5 incorporates all the features of claim 1 and therefore is
not anticipated or made obvious by JP’992, as well. Consequently, the Examiner’s
determination not to adopt the rejection of claim 5 is affirmed.

NON-ADOPTED REJECTIONS 15, 16, 19, & 20
Issue
In response to statements made in SRAM’s Response to the Action Closing
Prosecution, Shimano proposed new rejections based on new prior art which had
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not been cited previously (Shimano Appellant App. Br. 9-11 & 13-14). Shimano
cited 37 C.F.R. § 1.948(a)(2) as authorizing them to propose a rejection based on
new prior art to rebut a response by SRAM. The relevant sections of 37 C.F.R.
§ 1.948 are reproduced below:
(a) After the inter partes reexamination order, the third party requester
may only cite additional prior art as defined under § 1.501 if it is filed
as part of a comments submission under § 1.947 or § 1.951(b) and is
limited to prior art:
. . .
(2) which is necessary to rebut a response of the patent owner; or
. . .

The Examiner and SRAM take the position that a new rejection can only be
proposed in response to an amendment to the claims.
The issue is whether 37 C.F.R. § 1.948(a)(2) entitles a third party requester
to propose a new rejection of unamended claims after the reexamination
proceeding has been ordered.
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Analysis
Under 35 U.S.C. § 311(a), a “third-party requester at any time may file a
request for inter partes reexamination by the Office of a patent on the basis of any
prior art cited under the provisions of section 301.” Within three months of the
request, the Director “shall determine whether a substantial new question of
patentability affecting any claim of the patent concerned is raised by the request,
with or without consideration of other patents or printed publications.” 35 U.S.C.
§ 312(a). “If, in a determination made under section 312(a), the Director finds that
a substantial new question of patentability affecting a claim of a patent is raised,
the determination shall include an order for inter partes reexamination of the patent
for resolution of the question.” 35 U.S.C. § 313.
Once inter partes reexamination proceedings have been ordered, the third
party requester may only cite additional prior art under certain conditions specified
in 37 C.F.R. § 1.948(a)(1)-(3). One of those conditions is “to rebut a response of
the patent owner.” Shimano contends the rebuttal includes proposing a new
rejection.
The rules for inter parte reexamination do not provide for a third-party
requester to propose a new rejection of unamended claims based on prior art after
reexamination has been ordered. 37 C.F.R. § 1.948(a)(1)-(3) allows a requester to
submit additional prior art under certain specific circumstances, but does not
authorize the requester to propose a new rejection based on such prior art.
A requester’s ability to respond in an inter partes reexamination is dictated
by 37 C.F.R. § 1.947. Under this rule:
Each time the patent owner files a response to an Office action on the
merits pursuant to § 1.945, a third party requester may once file
written comments within a period of 30 days from the date of service
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of the patent owner's response. These comments shall be limited to
issues raised by the Office action or the patent owner's response.
The rejection proposed by Shimano was not in response to issues by the
Examiner or the patent owner and is therefore precluded by § 1.947, as well.
With regard to the issue of whether the newly cited prior art was properly
cited by SRAM, we note that this issue does not go to the merits of a rejection, and
therefore is a petitionable matter not under our jurisdiction to decide.

NON-ADOPTED REJECTION 18
The Examiner did not adopt the rejection of Claim 8 as obvious under 35
U.S.C. § 103(a) over JP’992 and Noro. Claim 8 requires a substantially symmetric
reservoir. As discussed in Rejection 1, such feature is not described or suggested
by JP’992. The reservoir described in JP’992 is asymmetric. We have duly
evaluated of Shimano’s asserted basis as to why claim 8 should have been rejected
over JP ‘992 and Noro. However, we conclude that Shimano has not adequately
accounted for the symmetric reservoir requirement of claim 8. Thus, the rejection
of claim 8 over JP ‘992 and Noro was properly not adopted by the Examiner.

SUMMARY
Adopted Rejections
1. The rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as
anticipated by JP’992 is REVERSED.
2. The rejection of claims 1, 3, and 4 under 35 U.S.C. § 103(a) as obvious in
view of JP’992 is REVERSED.
3. The rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as obvious in
view of JP’992 and DE’399 is AFFIRMED.
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The rejection of claim 4 under 35 U.S.C. § 103(a) as obvious in view of
JP’992 and DE’399 is REVERSED.
4. The rejection of claim 5 under 35 U.S.C. § 103(a) as obvious in view of
JP’992 and Kawaguchi is REVERSED.
5. The rejection of claim 5 under 35 U.S.C. § 103(a) as obvious in view of
JP’992, DE’399 and Kawaguchi is REVERSED.
6. The rejection of claims 2, 6, and 7 under 35 U.S.C. § 103(a) as obvious in
view of JP’992 and Noro is REVERSED.
7. The rejection of claims 2, 6 and 7 under 35 U.S.C. § 103(a) as obvious in
view of JP’992, DE’399 and Noro is REVERSED.
8. The rejection of claim 8 as obvious under 35 U.S.C. § 103(a) over
JP’992, Noro, and Kawaguchi is REVERSED.
9. The rejection of claim 8 as obvious under 35 U.S.C. § 103(a) over
JP’992, DE’399, Noro, and Kawaguchi is REVERSED.

Non-adopted rejections
The Examiner’s decision not to adopt rejections numbered 10-20 in this
opinion is AFFIRMED.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79.

AFFIRMED-IN-PART; REVERSED-IN-PART

Appeal 2011-010923
Reexamination Control 95/001,309
Patent 7,559,414 B2

41

Third Party Requester:

DELAND LAW OFFICE
P.O. BOX 69
KLAMATH RIVER, CA 96050-0069

Patent Owner:

SWANSON & BRATSCHUN, L.L.C.
8210 SOUTHPARK TERRACE
LTTLETON, CO 80120