Ex Parte Braedt

Patent Trial and Appeal Board

Sep 20, 2018

13371229 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/371,229 02/10/2012
23470 7590 09/24/2018
SRAM,LLC
1000 W. Fulton Market, 4th Floor
CHICAGO, IL 60607
FIRST NAMED INVENTOR
Henrik Braedt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20153US 9481
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
09/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lserdynski@sram.com
bgause@sram.com
bhinnen@sram.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRIK BRAEDT
Appeal2018-001379 1
Application 13/371,2292
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Henrik Braedt (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-5 and 7-15, which are all the pending
claims in the application. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("Br.," filed June 20,
2017), the Examiner's Answer ("Ans.," mailed Aug. 22, 2017), and the Final
Office Action ("Final Action," mailed Jan. 20, 2017).
2 Appellant identifies the real party in interest as "SRAM Deutschland
GMBH." Br. 2.
3 Claims 6 and 16 are canceled. Id. at 17, 20 (Claims App.).
Appeal2018-001379
Application 13/371,229
CLAIMED INVENTION
Appellant's "invention relates to bicycles including a multi-gear
cassette or multi-sprocket cassette with different sized sprockets for
engaging a chain, such as a roller chain." Spec. ,r 1. "In particular, the
invention relates to devices [] for the damping of noise created by the
interaction of a roller chain and a sprocket of a multi-gear cassette in a drive
assembly of a bicycle." Id. Claim 1 reproduced below is the sole
independent claim, and representative of the subject matter on appeal.
1. A multi-gear cassette for use with a roller chain of a
bicycle, the multi-gear cassette comprising;
a plurality of sprockets of varying diameters arranged
coaxially about a cassette axis; and
a damping element disposed between at least one
adjacent pair of the plurality of sprockets that have different
diameters, the damping element positioned to contact a chain
link plate of the roller chain when the roller chain is engaged
with one of the plurality of sprockets and the damping element
is configured to not contact the chain link plate of the roller
chain when the roller chain is running out of engagement with
the one of the plurality of sprockets.
Br. 16, Claims App.
REJECTIONS
1. Claims 1--4, 7-12, 14, and 15 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kamada (US 2011/0053721 Al, pub.
Mar. 3, 2011) and Downey (US 975,938, iss. Nov. 15, 1910).
2. Claims 5 and 13 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kamada, Downey, and Braedt
(US 2010/0075791 Al, pub. Mar. 25, 2010).
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Appeal2018-001379
Application 13/371,229
ANALYSIS
In rejecting independent claim 1 as obvious over Kamada and
Downey, the Examiner finds that Kamada discloses "a plurality of sprockets
(14) of varying diameters arranged coaxially about a cassette axis (fig. 3)"
(Final Act. 2), and acknowledges that Kamada fails to disclose:
a damping element disposed between at least one
adjacent pair of the plurality of sprockets that have different
diameters, the damping element positioned to contact a chain
link plate of the roller chain when the roller chain is engaged
with one of the plurality of sprockets and the damping element
is configured to not contact the chain link plate of the roller
chain when the roller chain is running out of engagement with
the one of the plurality of sprockets.
Id. at 4. Instead, the Examiner relies on Downey to teach cushioning rings 9
that are supported by flanges disposed against each side of the face of the
gear. Id. at 5; see Downey 1 :44--55, 84--86. The Examiner determines that
"[i]t would have been obvious to one having ordinary skill in the art ... to
employ a damping, as taught by Downey, to engage with the drive chain to
reduce noise and vibration induced from the drive transmission between the
chain and sprocket." Final Act. 7.
Alleging error in the rejection, Appellant argues that the Examiner's
proposed modification is suggested nowhere in the references and "born
from the use of impermissible hindsight reconstruction in view of
Applicant's Specification." Br. 10. Appellant contends: "Downey discloses
a single sprocket gear" that "necessarily includes a flange on both sides of
the singular gear to support the cushion rings 9" and "does not disclose a
damping element disposed between any sprockets, let alone at least one
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Appeal2018-001379
Application 13/371,229
adjacent pair of a plurality of sprockets that have different diameters." Id. at
7. Additionally, Appellant contends:
[C]ombining Kamada with Downey would yield a plurality of
sprockets having cumbersome support flanges on either both
sides of a single sprocket, or both sides of each sprocket, of the
plurality of Kamada sprockets. Downey specifically teaches
that the cushion "is supported in the manner here shown" in
Figures 2 and 3. (Downey, page 1, lines 75-77). No discussion
is presented for the need, use, or accounting of these supports or
cushions of Downey, as applied to the sprockets of Kamada.
One experienced in the art would recognize clearly identifiable
problems that would exist if the support structure of Downey
were combined with Kamada, for example shifting between
sprockets would be impeded.
Id. at 9-10. According to Appellant, the Examiner's rationale for the
combination "that it would have been obvious to one of ordinary skill in the
art ... to employ the cushion rings of Downey to the sprockets in Kamada to
reduce noise in the sprockets" (id. at 10) improperly relies on hindsight,
because "there is no evidence in the record that there was a known vibration
or noise problem with the Kamada sprockets that would cause a person in
the art to tum to the teachings of Downey." Id. at 12 ("the noise or vibration
problem with Kamada appears to have been conjured by the Examiner in
order to modify the presented references to render obvious the patentable
features of the Applicant's multi-gear cassette configuration.").
In response to Appellant's arguments, the Examiner repeatedly quotes
from and cites to In re McLaughlin 4 (see Ans. 3, 5, 6-7), and repeatedly
asserts:
It is well known to one having ordinary skill in the art that an
impact between two hard structures, such as a chain and a
4 443 F.2d 1392 (CCPA 1971).
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Appeal2018-001379
Application 13/371,229
sprocket, would produce noise and vibration. The noise and
vibration are not desirable to a user. As such, employing a
damping element between the interface of the chain and
sprocket would help reduce these undesirable characteristics
and ensure a more pleasant operation. Downey page 1 lines
11-12 and 91-92 further supports that the damping element is
desirable to prevent noise and vibration.
Id. at 4; see also id. at 5, 7. Appellant's arguments are persuasive.
As discussed above, claim 1 recites "a damping element disposed
between at least one adjacent pair of the plurality of sprockets that have
different diameters." Br., Claims App. The claim requires the positioning
of a dampening element between a pair of sprockets. Further, the claim
requires a structural configuration such that
Id.
the damping element [is] positioned to contact a chain link plate
of the roller chain when the roller chain is engaged with one of
the plurality of sprockets and the damping element is
configured to not contact the chain link plate of the roller chain
when the roller chain is running out of engagement with the one
of the plurality of sprockets.
The Examiner's obviousness determination merely offers a
conclusion, without adequate evidence or technical reasoning as to the
placement of Downey's dampening element with Kamada's sprocket to
achieve the proposed modification. The Examiner appears to rely heavily on
common knowledge "that an impact between two hard structures, such as a
chain and a sprocket, would produce noise and vibration" (see supra) to
modify Kamada' s sprocket with the cushioning rings of Downey to achieve
the structural configuration claimed, and to serve as motivation to combine
the prior art references. In this case, the Examiner's reliance on "common
knowledge" appears to be ad hoc in nature. Although the interaction
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Application 13/371,229
between a chain and sprocket might produce some noise, there is no
indication in Kamada that, if such noise is produced, it would be of a type
that is loud enough to warrant a dampening device. Moreover, even if a
dampening device were to be included into Kamada' s sprocket, we fail to
understand, and the Examiner has not adequately explained, why the
combined teachings of Kamada and Downey would result in the claimed
subject matter.
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Kamada and Downey. The Examiner's additional findings and
determinations with respect to the dependent claims and the additional prior
art reference (Braedt) do not remedy the above-discussed deficiency in the
rejection of independent claim 1.
DECISION
The Examiner's decision to reject claims 1-5 and 7-15 is reversed.
REVERSED
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