Ex Parte Fujii et al

Patent Trial and Appeal Board

Jan 29, 2013

11698956 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NOBUYOSHI FUJII and YOSHIAKI NANKO
____________________

Appeal 2011-001001
Application 11/698,956
Technology Center 3600
____________________

Before KEN B. BARRETT, MICHELLE R. OSINSKI, and
BRADFORD E. KILE, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nobuyoshi Fujii and Yoshiaki Nanko (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1-15. An oral hearing
was held on January 25, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-001001
Application 11/698,956

2
THE INVENTION
Appellants’ claimed invention pertains to a bicycle chain guide for a
front derailleur. Spec. 1, para. [0001]. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A bicycle chain guide comprising:
a first guide plate having a first chain engagement
surface;
a second guide plate having a second chain engagement
surface facing the first chain engagement surface to form a
chain receiving area therebetween;
a first connection part extending between the first and
second guide plates to connect the first and second guide plates
together at a first location, the first connection part being fixed
to the first guide plate by a fastener, the fastener defining an
attachment axis; and
a second connection part extending between the first and
second guide plates to connect the first and second guide plates
together at a second location spaced from the first location,
the first guide plate having a first abutment and the first
connection part having a second abutment, the first and second
abutments being arranged at a rear end of the chain guide to
limit relative rotational movement of the first and second guide
plates about the attachment axis.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1-7 and 9-15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nanko (US 6,962,544 B2, issued Nov. 8, 2005), and
Desenclos (US 6,009,771, issued Jan. 4, 2000); and
Appeal 2011-001001
Application 11/698,956

3
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nanko and Kondo (US 6,629,903 B1, issued Oct. 7,
2003)1.

OPINION
Claim 1 is the sole independent claim on appeal. The Examiner found
that Nanko discloses the claimed invention of claim 1 except for an explicit
disclosure of the claimed abutment arrangement. Ans. 4. The Examiner
further found that Desenclos discloses this feature. Id. at 4, 10-14.
Appellants argue that Desenclos’s drawings and description are inadequate
to support the Examiner’s finding. App. Br. 12-13. We find Appellants’
argument to be persuasive.
We understand the Examiner to have found that Desenclos discloses
two “abutment” surfaces arranged so as to contact each other during relative
rotational movement thereby limiting the movement. See Ans. 12.
However, we are unable to discern from Desenclos’s figures, including those
relied upon and annotated by the Examiner, whether the surfaces found to be
abutments are arranged such that they would contact each other during
rotation. The Examiner does not direct our attention to any portion of
Desenclos’s written description that supports the finding. As such, we

1 The Examiner did not include Desenclos in the statement of the second
ground of rejection, but may have intended to do so. Compare Ans. 7
(statement of the ground of rejection) with id. at 15 (referring to the
combination of three references, including Desenclos). In light of the
ultimate decision in this appeal, we need not determine whether Desenclos is
properly part of the second rejection.

Appeal 2011-001001
Application 11/698,956

4
cannot find by a preponderance of the evidence that Desenclos discloses
“first and second abutments being arranged at a rear end of the chain guide
to limit relative rotational movement of the first and second guide plates
about the attachment axis,” as recited in claim 1. Because the Examiner’s
obviousness rejection is based on this finding, we do not sustain the rejection
of claim 1 or of claims 2-7 and 9-15, which depend therefrom.
The Examiner’s articulation of the rejection of claim 8, which also
depends from claim 1, does not remedy the defect discussed above.
Accordingly, we also cannot sustain the rejection of claim 8.

DECISION
The decision of the Examiner to reject claims 1-15 is reversed.

REVERSED

mls