Ex Parte Kirmoto et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10826173 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KANJI KIRIMOTO, TSUYOSHI SAKASHITA
and KAZUHISA YAMASHITA
____________________

Appeal 2009-002559
Application 10/826,173
to reissue Patent 6,557,671
Technology Center 3600
____________________

Decided: August 17, 2009
____________________

Before: ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge,
FRED E. McKELVEY, Senior Administrative Patent Judge, and HOWARD
B. BLANKENSHIP, Administrative Patent Judge.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case 1
The application on appeal was filed on 19 April 2004 to reissue 2
U.S. Patent 6,557,671 B1. 3
Shimano, Inc. ("Shimano"), the real party in interest, seeks review 4
under 35 U.S.C. § 134(a) of a final rejection (mailed 28 September 2007). 5
(1) Claims 37-43, 47-54 and 69-74 are rejected as being unpatentable 6
under 35 U.S.C. § 103 over: 7
(i) Carre, U.S. Patent 4,582,177, 8

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(ii) Le Deit, U.S. Patent 5,697,475, and 1
(iii) Huang, U.S. Patent 6,148,964. 2
(2) Claims 55-59 are rejected as being unpatentable under 35 U.S.C. 3
§ 103 over: 4
(i) Carre, 5
(ii) Le Deit, 6
(iii) Isai, U.S. Patent 5,960,914, and 7
(iv) Huang. 8
(3) Claim 60 is rejected as being unpatentable over: 9
(i) Carre, 10
(ii) Mott, U.S. Patent 5,201,402, 11
(iii) Le Diet, 12
(iv) Isai, and 13
(v) Huang. 14
Le Deit, Carre and Mott are prior art under 35 U.S.C. § 102(b). 15
Isai is prior art under 35 U.S.C. § 102(a). 16
Huang is prior art under 35 U.S.C. § 102(e). 17
Shimano does not attempt to antedate (37 C.F.R. § 1.131) Isai or 18
Huang. 19
We discuss the prior art rejections in Part C. 20
(4) Claims 37-60 and 69-74 are rejected as being unpatentable based 21
on the "recapture" rule. 22
We discuss the recapture rule rejection in Part D. 23
Claims 1-36, 61, 63-65 and 67-68 have been allowed. 24

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See Appendix 1 at the end of this opinion for a visual summary of the 1
rejected and allowed claims. 2
Claim 54 3
In the final rejection and the Examiner's Answer, claim 54 is not 4
included in the list of claims rejected over Le Deit, Carre and Huang. 5
Nevertheless, the Examiner discusses why claim 54 is not patentable 6
over the prior art. 7
In the Appeal Brief, Shimano treats claim 54 as rejected over Le Deit, 8
Carre and Huang. Appeal Brief, pages 7 and 13. 9
Upon a consideration of the record, as a whole, we find that 10
(1) claim 54 was rejected over Le Deit, Carre and Huang and 11
(2) while Shimano does not single out claim 54 for separate 12
consideration, Shimano nevertheless contests the rejection of 13
claim 54—along with other claims—on appeal. 14
We have jurisdiction under 35 U.S.C. § 134(a). 15
B. Findings of fact 16
The following findings of fact are believed to be supported by a 17
preponderance of the evidence. 18
References to the specification are to U.S. Patent 6,557,671 B1. 19
To the extent that a finding of fact is a conclusion of law, it may be 20
treated as such. Additional findings as necessary may appear in the 21
Discussion portion of the opinion. 22

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The invention 1
The invention of claim 37 can be understood by reference 2
to (1) Figs. 1, 2, 4, 5, 6, 7 and 44, all reproduced below, and (2) associated 3
parts of the specification. 4
Elements mentioned in claim 37 are also described after reproduction 5
of the drawing Figs. 6
7
Fig. 1 depicts a side elevation view of a bicycle 8
with a pair disk brakes 12a and 12b 9
12a is a front wheel cable disc brake. 12b is the back wheel disc 10
brake. 11
16a is a front bicycle wheel. 12

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1
Fig. 2 depicts a side elevational view of a front portion 2
of a bicycle with a front cable disc brake 3
4
12a is a front wheel disc brake. 5
20a is a disc brake rotor (see also the unnumbered curved element 6
right above "FIG. 2"). 7
25a is a cable. 8

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1
2
Fig 4 depicts a partial side elevational view 3
of the front cable disc brake 4
12a is a disc brake. 5
25a is a cable. 6
44 is a cable support. 7
98 is an elongated actuating arm (see also Fig. 7). 8

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1
Fig. 5 depicts a longitudinal cross-sectional view 2
of the front cable disc brake 3
12a is a disc brake. 4
30 is a caliper housing. 5
44 is a cable support. 6
98 is an elongated actuating arm (see also Fig. 7). 7

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1
Fig. 6 depicts an exploded elevational view 2
of a front cable disc brake 3
32 (left and right) are first and second friction members. 4
34 is a cam assembly. 5
36 is an actuating assembly (i.e., actuating mechanism). 6
The cam assembly and actuating assembly together form a cable 7
actuated mechanism that moves the brake pads between a release position 8
and braking position. Col. 6:16-19. 9
72 is an opening. 10
103 is a cable clamping bolt. 11
104 is a cable clamping plate. 12

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1
Fig. 7 depicts a front elevational view of a 2
left caliper portion of a front cable disc brake 3
42 is a body portion. 4
43 is a mounting bracket. 5
44 is a cable support. 6

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1
Fig. 44 depicts an end elevational view of 2
an actuating arm for a front cable disc brake 3
98 is an actuating arm. 4
98i is a curved guide surface. 5
6
Rejected claim 37 reads as follows [bracketed material, drawing Figs. 7
and element numbers and references to specification added]: 8
A cable disc brake [Figs. 1 and 5, 12a; col. 6:13-16] for a 9
bicycle comprising: 10
[1] a caliper housing [Fig. 5, 30; col. 6:13-16] with a mounting 11
bracket [Fig. 7, 43; col. 6:41-43] structured and dimensioned to be 12
attached to a bicycle [as shown in Fig. 2] and with a cable support 13
[Figs. 5 and 7, 44; col. 6:41-43] having an opening (Fig. 7, 72; col. 14
7:37-39) for guiding a cable [Figs. 2 and 5, 25a; col. 5:55-62 and col. 15
10:34-37] therethrough; 16
[2] wherein the cable support 44 extends from a surface of the 17
caliper housing 30 [at body portion 42 as shown in Fig. 7] and is not 18
adjustable in any direction relative to the surface of the caliper 19

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housing [because, for example, body portion 42 and cable support 44 1
are one piece as shown in Fig. 7 and described at col. 6:41-43]; 2
[3] a first friction member [left side 32, Fig. 6; col. 6:13-16] 3
coupled to the caliper housing 30 for movement between a release 4
position and a braking position [col. 6:21-24]; 5
[4] a second friction member [right side 32, Fig. 6; col. 6:13-6
16] coupled to the caliper housing 30 and arranged substantially 7
parallel to the first friction member 32 to form a rotor receiving slot 8
therebetween [Fig. 5; col. 6:24-29]; and 9
[5] an actuated mechanism [34, 36, Fig. 5; col. 6:16-19] 10
movably coupled to the caliper housing 30 to move the first friction 11
member 32 in an axial direction from the release position towards the 12
second friction member 32 to the braking position (col. 6:16-19); 13
[6] wherein the actuated mechanism 34, 36 comprises an 14
elongated actuating arm [98, Figs. 5 and 44; col. 10:17-22] rotatably 15
coupled to the caliper housing 30 to cause the actuated mechanism 34, 16
36 to move the first friction member 32 from the release position 17
towards the braking position (col. 11:12-30); 18
[7] wherein the actuating arm 98 has a curved guide surface 19
[98i, Fig. 44] with a first portion coincident with a cable clamp [103 20
(clamping bolt), 104 (clamping plate), Fig. 4; col. 10:34-37] and a 21
second portion [curved tip, Fig. 4, unnumbered] that extends from the 22
first portion towards the cable support 44 so that the cable 25a, when 23
coupled to the cable clamp 103, 104, approaches the guide surface 98i 24
from the opening 72 in the cable support 44 essentially tangent to the 25

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guide surface 98i and is supported by the guide surface 98i when the 1
first friction member 32 is in the release position [shown in Figs. 2 2
and 4]. 3
C. Prior art rejections 4
Claims 37-43, 47-60 and 69-74 stand rejected under 35 U.S.C. § 103 5
over the prior art. 6
To resolve the appeal, we focus solely on the arguments made by 7
Shimano in the Appeal Brief and Reply Brief. All other arguments not made 8
are waived. 9
Claim 37 10
Shimano has one argument with respect to the Examiner's § 103 11
rejection of claim 37. 12
Shimano calls our attention to the following limitation in claim 37 13
[comments in brackets, italics and drawing numerals added]: 14
wherein the cable support 44 extends from a surface of the 15
caliper housing 30 [at body portion 42 shown in Fig. 7] and is 16
not adjustable in any direction relative to the surface of the 17
caliper housing [because, for example, body portion 42 and 18
cable support 44 are one piece as shown in Fig. 7 and described 19
at col. 6:41.43]. 20
Appeal Brief, page 13; Response to Request for Additional Briefing, page 7. 21
According to Shimano, Le Deit does not describe the noted limitation 22
and therefore the § 103 rejection of claim 37 over the prior art is erroneous. 23
The Examiner found that the position of cable support 44 of Le Diet, 24
as illustrated in Fig. 6 (characterized as alternative embodiments to those 25

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shown in Figs. 1-5) is not adjustable, or adjustable in any direction. 1
Examiner's Answer, page 16. 2
The reader should know that, as a mere coincidence, both Shimano 3
and Le Deit label the cable support as 44. 4
The Examiner goes on to explain that index elements, or bump 5
formulations, 68' and 70', restrict the cable support 44 to a single position 6
with respect to caliper housing 46. The Examiner goes on to say that 7
therefore the cable support cannot be adjusted to any other position with 8
respect to the cable housing. Examiner's Answer, page 16. 9
In particular, the Examiner calls attention to Fig. 6 and col. 5:9-47. 10
11
Fig. 6 depicts a Le Deit alternative actuating device embodiment 12
Shimano refers to Le Deit Fig. 7, which is reproduced below. 13

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1
Fig. 7 depicts a section on VII-VII of Fig. 6 2
The portion of Le Deit relied upon by the Examiner notes the 3
following [bracketed matter and italics added] (col. 5:9-52): 4
[A] concave radial depression 68 is formed in the wall of 5
the groove 64 formed by the cylindrical boss 48, the center of 6
this depression 68 being situated substantially on a radius 7
joining the axis X—X' to the axis of the tapped bore 61. 8
Likewise, a concave radial depression 70 is formed in the 9
wall of the groove 64 formed by the projecting part 66 of the 10
caliper 12, the center of this depression 70 being situated 11
substantially on a radius joining the axis X—X' to the axis of 12
the tapped bore 61, so that the two depressions 68 and 70 face 13
each other on each side of the axis of the tapped hole 61 [Fig. 14
7]. 15
Finally, the screw 60 [Fig. 7] includes, between its 16
operating head 72 and its threaded shank 74, an intermediate 17
part 76 of axial length substantially equal to the thickness of the 18
bracing piece 44, and the cross-section of which adopts a cam 19

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shape, the largest diameter of which is greater than the initial 1
width of the oblong slot 56. 2
When the brake is being set in the way which has already 3
been explained, once the tab 54 is bearing on the lever 32, the 4
initial effect of tightening the screw 60 in the bore 61 is to hold 5
it radially in the caliper 12 [Fig. 1—not reproduced]. 6
Then, as the screw 60 is tightened further, the 7
intermediate part 76 is brought into the vicinity of the edge of 8
the oblong slot 56. The cam-shaped cross-section of the 9
intermediate part 76 then deforms the walls of the slot 56, 10
which deformation is passed on to the material of the arm 62, 11
the depress then expand into the depressions 68 and 70, therein 12
forming bumps 68' and 70' respectively. The bracing piece 44 13
is thus in its optimum position as defined above. 14
In contrast, if the screw 60 is taken out following an 15
incorrect operation, the bracing piece 44 is no longer held and 16
can then escape. It will then be very easy to put it back in 17
place, and what is more, to put it back in place in its initial and 18
optimum setting position. In fact, it will have been understood 19
that the only possible angular position for the bracing piece 44 20
on the caliper 12 is the one in which the bumps 68' and 70' are 21
put back in place in the depressions 68 and 70. 22
All that will then be required will be to put the bracing 23
piece 44 back into this position, then to retighten the screw 60, 24
or even some other screw which does not have the intermediate 25

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cam-shaped part 76, in order to regain the disk brake with its 1
optimum initial setting. 2
Shimano urges that the Le Deit cable support is "adjustable" whereas 3
claim 37 requires that the cable support "is not adjustable." The Examiner 4
found otherwise. Shimano has not convinced us that the Le Deit cable 5
support is adjustable. In fact, based on Le Deit Fig. 6 and the accompanying 6
discussion, it would appear that the cable support, once in place, is intended 7
to remain in place. No further adjustment is needed or would be 8
contemplated. 9
Shimano cites and relies on Dorel Juvenile Group, Inc. v. Graco 10
Children's Products, Inc., 429 F.3d 1043 (Fed. Cir. 2005) (two parts screwed 11
together are "removably attached" in the context of the invention involved). 12
The Dorel "-able" definition is said to have been adopted in an amendment 13
filed on 9 July 2007. Language in a claim undergoing examination is given 14
its broadest reasonable construction consistent with the specification. In re 15
Prater, 56 CCPA 1381, 1396, 415 F.2d 1393, 1404 (CCPA 1969). We fail 16
to see how the invention described in the patent involved in the Dorel 17
opinion has anything to do with Shimano's invention. 18
The word "adjustable" is not found in the specification of the Shimano 19
patent—or at least we could not find it. Because body portion 42 [Shimano 20
Fig. 7] and cable support 44 are characterized as being one piece, Shimano 21
reasons they are not adjustable one vis-à-vis the other. What is manifest is 22
that once put together, the Le Deit device is not adjustable within the 23
ordinary meaning of that term. The Fig. 7 Shimano device and the Fig 6. 24
Le Deit device appear to be equally non-adjustable. 25

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According to Shimano, the Le Deit configuration is adjustable. Why? 1
Because, Le Deit screw 60 could be loosened or removed, and then washers 2
or shims could be placed beneath cable support 44 thereby adjustment the 3
position of cable support 44 upwardly from the page. Appeal Brief, page 14. 4
As the Examiner notes, Shimano's possibility is mere speculation. 5
Examiner's Answer, page 16. "[N]one of what the applicant states [, i.e., 6
speculates,] need occur [to construct and use the Le Deit device as described 7
by Le Deit]. Id. 8
The decision of the Examiner rejecting claim 37 under § 103 over the 9
prior art is affirmed. 10
Claim 38 11
Claim 38 reads (italics added): 12
A cable disc brake according to claim 37 [reproduced 13
earlier] wherein the second portion of the guide surface is 14
formed by a projection that forms a circumferentially elongated 15
protuberance that points in a rotational direction of the 16
actuating arm towards the cable support where the cable passes 17
through the cable support such that the cable is supported on 18
and by the protuberance. 19
According to Shimano, neither Le Deit nor Carre nor Huang describe 20
a projection that forms a circumferentially elongated protuberance. Appeal 21
Brief, page 14. 22
As in the case of the word "adjustable" in claim 37, the word 23
"protuberance" is not to be found in the Shimano specification. As best we 24

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can tell, the word was added to claim 38 sometime after filing of the 1
application which matured into the Shimano patent. 2
In an amendment filed 26 April 2007, Shimano states (page 19): 3
A protuberance is defined for the purpose of the claim as a 4
structure that bulges out beyond the surrounding surface. 5
While a patent applicant may act as its own lexicographer, the place to 6
do so is in the specification, as filed—not as an afterthought in an 7
amendment filed after the application is filed. 8
We would add that we do not believe the word "elongated" adds much 9
to "protuberance" given the Shimano "definition" of "protuberance." In 10
other words, on this record we would not be able to distinguish "elongated 11
protuberance" from "protuberance." 12
Taking Shimano at its word, and using its definition of "elongated 13
protuberance," the Examiner found that Fig. 6 of Carre describes the 14
required protuberance. Believing that a picture is worth a thousand words, 15
the Examiner provides the following annotated version of Carre Fig. 6: 16
17
Depicted is the Examiner's annotated version of Carre Fig. 6 18

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As the Examiner's annotated version of Carre Fig. 6 reveals, Carre 1
describes the required protuberance. 2
According to Shimano, no protuberance is shown. Shimano goes on 3
to say: 4
At most, the draftsperson inadvertently drew an unevenly 5
thick line as he or she drew the cured portion of the member 6
(50). There is no basis to believe that a protuberance was 7
intended, and certain not an elongated protuberance as recited 8
in claim 38. 9
Appeal Brief, page 15. 10
There is no testimony from the "draftsperson." Hence, neither the 11
Examiner nor this panel can determine whether an "unevenly thick line" was 12
or was not inadvertent. Nor can the Examiner or the Board determine what 13
was "intended." Rather, the Examiner and the Board make findings based 14
on the evidence. The factual question here is: "What is described in Fig. 6 15
of Carre?" Whether inadvertent or not, or intended or not, the plain fact is 16
that Carre Fig. 6 describes a protuberance within the meaning of Shimano's 17
afterthought definition of "protuberance." We cannot say the described 18
protuberance is not elongated because Shimano failed in its specification to 19
define the meaning of elongated. Accordingly, anything that "sticks" out 20
can be fairly said to be a "protuberance" or an "elongated protuberance." 21
The decision of the Examiner rejecting claim 38 under § 103 is 22
affirmed. 23

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Claims 39 and 40 1
Claim 39 reads: 2
A cable disc brake according to claim 38 [reproduced earlier] 3
wherein the projection has a radially outer portion that extends 4
towards the cable support and a radially inner portion that 5
extends away from the cable support back towards a side 6
surface of the actuating arm. 7
Claim 40 reads: 8
A cable disc brake according to claim 39 wherein the projection 9
is disposed in close proximity to a radially outermost portion of 10
the actuating arm. 11
According to Shimano, the combination of Le Deit, Carre and Huang 12
do not disclose or provide "a motivation" to form the required outer and 13
inner portions of claim 39 or the projection of claim 40. Appeal Brief, 14
page 15. Shimano adds nothing to the "argument" in its Reply Brief. Reply 15
Brief, page 3. 16
In the Final Rejection (mailed 28 September 2007), the Examiner 17
made the following findings (page 5): 18
Carre … teach[es] a cable disc actuating system comprising an 19
actuating arm 50 provided with a curved guide surface with a 20
first portion coincident with a cable clamp 58 and a second 21
portion extending from the first portion, wherein the second 22
portion is a projection defined by a protuberance (see figure 6, 23
note the slight protuberance at the cable exit portion of the arm) 24
that supports the cable (claim 38); the projection has a radially 25

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outer portion (claim 39); the projection is disposed at the 1
radially outermost portion of the actuating arm (claim 40); the 2
cable, once coupled to the cable clamp, approaches the guide 3
surface from the opening in the cable support in substantially a 4
straight line (claim 54, due to the curved guide surface the cable 5
extending from the cable support will extend in a straight line 6
as shown by Carre …). Furthermore, Carre … teach[es] that 7
the curved guide surface structure of the actuation arm provides 8
for an increase in torque exerted during rotation, see column 4, 9
lines 61-64, thereby improving braking response. 10
The Examiner goes on to explain why it would have been obvious to 11
replace the actuating arm of Le Deit with the actuating arm taught by Carre, 12
"thereby improving the overall brake performance and response of the cable 13
actuated brake mechanism." Final Rejection, page 5. 14
An appeal brief is supposed to contain the "contentions of appellant 15
with respect to each ground of rejection … and the basis therefore, with 16
citations of the … parts of the record relied on." 37 C.F.R. 17
§ 41.37(c)(1)(vii). 18
What Shimano's Appeal Brief amounts to is an assertion that the 19
Examiner is wrong. Missing from the brief is the "why?" Compare 20
Ex parte Belinne, Appeal 2009-004693, slip op. at 6-7 (BPAI Aug. 10, 2009 21
(informative opinion), available at: 22
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf 23
Shimano did not undertake a discussion pointing out why the 24
Examiner's findings are wrong. A skeletal argument, really nothing more 25

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than an assertion, does not preserve a claim for argument on appeal. 1
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 n.2 (Fed. 2
Cir. 2008) ("Judges are not like pigs, hunting for truffles buried in briefs." 3
(quoting United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991))). A 4
brief must present all arguments and cannot ask judges to play archaeologist 5
with a record. DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999). 6
Shimano, in effect, invites us to "dig" through the record to see if we can 7
find evidence to make out Shimano's case on appeal. We decline the 8
invitation because it is not our role to act as advocate for an appellant. Ernst 9
Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 112 (2d Cir. 1999). 10
Since Shimano has not addressed the Examiner's findings and has 11
merely asserted that the Examiner has erred, the decision of the Examiner 12
rejecting claims 39 and 40 under § 103 is affirmed. 13
Claim 43 14
Claim 43 reads (italics added): 15
A cable disc brake according to claim 41 [not reproduced] 16
further comprising an adjusting mechanism that adjusts the 17
biasing force applied between the caliper housing and the 18
actuating arm in addition to changes of biasing force caused by 19
rotation of the actuating arm relative to the caliper housing. 20
Claim 43 was finally rejected under § 103 over the combination of 21
Le Deit, Carre and Huang. Final Rejection, page 4. 22
However, we have been unable to find any discussion in the Final 23
Rejection addressing claim 43 in particular. Shimano seems to agree and 24

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goes so far as to suggest that claim 43 was not rejected. Appeal Brief, 1
page 15. 2
Nevertheless, Shimano makes a preemptive strike against any 3
rejection which might be made in the Examiner's Answer. According to 4
Shimano: 5
[N]either Le Deit . . . , Carre . . . nor Huang provide a 6
motivation to provide an adjusting mechanism that adjusts the 7
biasing force applied between the caliper housing and the 8
actuating arm in addition to changes of biasing force caused by 9
rotation of the actuating arm relative to the caliper housing. 10
Appeal Brief, page 15. 11
In the Examiner's Answer, the Examiner confirms that claim 43 was 12
rejected. Examiner's Answer, page 18. 13
Responding to Shimano's preemptive strike, the Examiner states: 14
With regards to claim 43, turning to figure 6 in Le Deit 15
. . . attention is drawn to a bushing element positioned between 16
a spring end and limit stop 42. The length of this element will 17
determine in part the biasing force applied between the caliper 18
housing and the actuating arm, by either contracting or 19
expanding the rest length of the spring. 20
Id. Le Deit Fig. 6 is reproduced earlier in this opinion. 21
In its Reply Brief, Shimano states: 22
With regards to claim 43, there is no teaching or reason to 23
modify the length of any bushing in Le Diet . . . to adjust a 24
biasing force of the spring surrounding cable 38. 25

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Reply Brief, page 3. 1
The argument in the Reply Brief is a new argument. Ordinarily a new 2
argument in a Reply Brief is not considered. However, in this case the 3
Examiner's first exposition of why claim 43 is unpatentable took place in the 4
Examiner's Answer. Under the circumstances, we believe the argument in 5
the Reply Brief should be considered—otherwise Shimano has no 6
opportunity to address the § 103 rejection of claim 43 on the merits. 7
We understand what the Examiner is saying, but we agree with 8
Shimano that there is no teaching or reason to modify the length of any 9
bushing. To be sure, as the Examiner notes, different size bushings might be 10
used. However, unexplained is why use of different size bushings is "an 11
adjusting mechanism" within the meaning of claim 43. 12
The decision of the Examiner rejecting claims 43 under § 103 is 13
reversed. 14
Claim 47 15
Claim 47 reads: 16
A cable disc brake according to claim 37 [reproduced earlier] 17
further comprising a cable adjusting bolt fitted within the 18
opening in the cable support through which the cable passes. 19
In the Final Rejection, the Examiner observed [referring to what we 20
believe is Fig. 2 of Le Deit]: 21
Re-claim 47, the opening in the cable support 44 is provided 22
with cable adjusting bolts or elements. 23
Final Rejection, page 6. 24

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Fig. 2 of Le Deit is reproduced below. 1
2
Depicted is mechanical actuating device 3
according to the Le Deit invention 4
According to Shimano, the prior art does not disclose or provide a 5
motivation to include a cable adjusting bolt fitted within the opening in the 6
cable support through which the cable passes. Appeal Brief, page 15. 7
In the Examiner's Answer, the Examiner appears to shift the basis for 8
the rejection stating: 9
With regards to claim 47, Carre . . . clearly teaches a 10
cable adjusting bolt 46, which is clearly capable of being 11
incorporated into the assembly of Le Deit . . . , as this is a 12
common means by which to provide the user a method by 13
which to adjust the cable tension. 14
Examiner's Answer, page 18. 15
Carre Fig. 3 is reproduced below. 16

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1
Depicted is a control jack with a modified output member 2
Shimano's reply to the Examiner's shift in emphasis is: 3
With regards to claim 47, Carre . . . neither discloses nor 4
provides a motivation to include a cable adjusting bolt fitted 5
within any opening in any cable support associated with 6
"actuating arm (50)." 7
Reply Brief, page 3. 8
Carre describes a cable adjusting bolt 46 fitted within output member 9
38. Claim 47 requires no more. The Examiner found that the means 10
described by Carre "is a common means by which to provide the user a 11
method by which to adjust the cable tension." Examiner's Answer, page 18. 12
Shimano has not taken issue with the Examiner's finding. Accordingly, we 13
accept the Examiner's finding. In re Eskild, 55 CCPA 807, 810, 387 F.2d 14
987, 988-89 (CCPA 1968) (Examiner's statement relating to common 15
practices in the art was accepted as factual in view of appellant's failure to 16

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challenge the statement). Shimano has failed to establish that the Examiner 1
erred in rejecting claim 47. 2
The decision of the Examiner rejecting claim 47 under § 103 is 3
affirmed. 4
Claim 69 5
Claim 69 reads [italics and bracketed matter added]: 6
A cable disk [sic—disc] according to claim 37 7
[reproduced earlier] wherein the cable support [44] is one piece 8
with the surface of the caliper housing [30] from which it 9
extends. 10
In the Final Rejection, the Examiner observed: 11
Re-claim 69, the cable support 44 is immobilized (see [Le Deit] 12
column 3 lines 39-43) with respect to the caliper housing 12 13
and as such is broadly interpreted as being one with the caliper 14
housing. 15
Final Rejection, page 6. 16
Le Deit states (col. 3:39-43): 17
The oblong slot 56 serves to immobilize the bracing piece 44 on 18
the caliper 12, for example by means of a screw 60 passing 19
through this opening and screwed into a tapped bore made in 20
the rear part 46 of the caliper 12. 21
Shimano "submit[s] that one piece means one piece. One piece does 22
not mean two pieces bolted together, nor is such an interpretation 23
reasonable." Appeal Brief, page 16. 24

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Responding, the Examiner found that once the cable support is 1
assembled and attached to the caliper housing that the two elements are 2
interpreted as one, or one piece. 3
On the "one piece" issue we find ourselves between a rock and hard 4
place. Shimano's claim uses the phrase "one piece" but the phrase is not 5
defined in the specification. For example, the specification does not say that 6
"one piece" means "one integral piece." 7
Shimano Figs. 4-5 and 7 show what appears to be a "one piece" (i.e., 8
an one integral piece) element made up of elements 30 and 44. The 9
specification says the following (col. 6:41-49) (italics added): 10
As seen in FIGS. 7-12, the left caliper portion 38 basically has a 11
body portion 42 a pair of mounting flanges 43 and a cable 12
support flange 44. The body portion 42 has a pad support 13
bore 45 extending in a longitudinal direction and an axially 14
extending internal bore 46 that extends longitudinally between 15
a first open end 48 and a second open end 50 of the left caliper 16
portion 38. The pad support bore 45 is utilized to support the 17
brake pads 32 on the caliper housing 30 as discussed below. 18
The specification also says (col. 7:33-37) (italics added): 19
As seen in FIGS. 2, 4, 7 and 8, the cable support member or 20
flange 44 extends outwardly from the body portion 42 in a 21
direction that is substantially tangent to an imaginary circle 22
with its center located at the center axis of the internal bore 46. 23
On the other hand, as noted by the Examiner, when two pieces are 24
connected so as to be immobilized one with respect to the other, we cannot 25

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say that the two pieces—now immobilized—do not function as one piece, 1
particularly when in combination they seem to function in the same manner 2
as a "one integral piece" would function. 3
At the end of the day, since the only "one piece" element described in 4
the specification is an integral element, we agree with Shimano that the Le 5
Deit device does not describe a "one piece" element. 6
The decision of the Examiner rejecting claim 69 under § 103 is 7
reversed. 8
Claim 72-73 9
The arguments with respect to claims 72-73 appear to be the same as 10
the argument with respect to claim 37. Appeal Brief, pages 16-17. 11
The decision of the Examiner rejecting claims 72-73 under § 103 is 12
affirmed. 13
Claim 74 14
Claim 74, like claim 69, recites a "one piece" element. See Appeal 15
Brief, page 18. Were it not for the "one piece" element limitation, we would 16
affirm. However, based solely on the "one piece" element difference, the 17
decision of the Examiner rejecting claim 74 under § 103 is reversed. 18

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Summary of disposition of prior art rejections 1
Apart from the claims addressed above, Shimano has not singled out 2
any other claim for separate consideration. 3
The decision of the Examiner rejecting claims 37-42, 47-60 and 72-73 4
over the prior art is affirmed. 5
The decision of the Examiner rejecting claims 43, 69 and 74 and 6
claims dependent therefrom (claims 70-71) over the prior art is reversed. 7
D. The "recapture" rule rejections 8
Claims to be considered 9
With respect to the recapture rule appeal, Shimano, in its Appeal Brief 10
and Reply Brief, presents specific arguments directed only to claims 37 and 11
72-74. Other dependent claims are not separately argued. Hence, ordinarily 12
we would consider only claims 37 and 72-74. Notwithstanding Shimano 13
presented no separate argument with respect to claim 69, but because of our 14
resolution of the § 103 issue of claim 69, we will consider claim 69 apart 15
from claim 37 (from which it depends). 16
In effect, claim 69 stands or falls with claim 74 because both contain a 17
"one piece" limitation. Compare the discussion of claims 44-46 infra, where 18
there was no occasion to consider prior art vis-à-vis claims 44-46. 19
Original claim 1 20
Original application 09/531,570 (now U.S. Patent 6,557,671 B1), as 21
filed, contained claims 1-13. 22
Original claim 1 read [drawing numbers and bracketed matter added]: 23
A cable disc brake comprising: 24
[1] a caliper housing 30 [col. 6:13-16]; 25

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[2] a first friction member 32 [Fig. 6, left side] movably 1
coupled to said caliper housing between a release position and a 2
braking position [col. 6:24-29]; 3
[3] a second friction member 32 [Fig. 6, right side] coupled to 4
said caliper housing 30 and arranged substantially parallel to said first 5
friction member 32 [Fig. 6, left side] to form a rotor receiving slot 6
therebetween [col. 7:62-65]; and 7
[4] an actuated mechanism 34, 36 [Fig. 6; col. 6:16-19] 8
movably coupled to said caliper housing 30 to move said first friction 9
member 32 [Fig. 6, left side] from said release position towards said 10
second friction member 32 [Fig. 6, right side] to said braking position 11
[col. 6:16-19] , said actuated mechanism 34, 36 having first 90 and 12
second 91 cam members [Fig. 5, col. 8:49-52] movably arranged 13
between an axially retracted position and an axially extended position 14
[col. 8:53-61] with a guide member 90c [Fig. 5; col. 8:62-65] 15
interconnecting said first 90 and second 91 cam members during 16
movement between said axially retracted position and said axially 17
extended position [col. 9:39-45]. 18
First rejection 19
All the original claims in the original application, including original 20
claim 1, were rejected under 35 U.S.C. § 102(b) as anticipated by 21
Toyomasu, U.S. Patent 3,765,511. Office Action mailed 23 May 2001 22
(Paper 6). 23

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First amendment 1
In an amendment received at the USPTO on 09 August 2001 (Paper 7, 2
Amendment A), claim 1 was amended to read [bracketed matter added; 3
limitations added shown in underlining]: 4
Claim 1 (amended). A cable disc brake comprising: 5
[1] a caliper housing; 6
[2] a first friction member movably coupled to said caliper 7
housing between a release position and a braking position; 8
[3] a second friction member coupled to said caliper housing 9
and arranged substantially parallel to said first friction member to 10
form a rotor receiving slot therebetween; and 11
[4] an actuated mechanism movably coupled to said caliper 12
housing to move said first friction member in an axial direction from 13
said release position towards said second friction member to said 14
braking position without rotating said first friction member [output 15
cam 91, which moves first friction member 32 (Fig. 6, left side), is 16
nonrotatably mounted to rotation stopper 94 (col. 9:49-53)], said 17
actuated mechanism having first and second cam members movably 18
arranged between an axially retracted position and an axially extended 19
position with a guide member interconnecting said first and second 20
cam members during movement between said axially retracted 21
position and said axially extended position, 22
one 90 of said first 90 and second 91 cam members being 23
rotatably mounted within said caliper housing 30, and the other 91 of 24

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said first 90 and second 91 cam members being movably mounted in 1
said axial direction [col. 9:32-37]. 2
In remarks, Shimano said inter alia the following: 3
In response, Applicant has amended independent claim 1 4
to clearly define the present invention over the prior art of 5
record. Amendment, pages 4-5. 6
In particular, independent claim 1 has been amended to 7
recite a cable disc brake having first and second cam members 8
with one of the first and second cam members being rotatably 9
mounted within the caliper housing, and the other of the first 10
and second cam members being movably mounted in the axial 11
direction. Moreover, independent claim 1 has been amended to 12
recite that the first friction members moves in an axial direction 13
without rotating. Clearly, this structure is not disclosed or 14
suggested by Toyomasu or any other prior art of record. More 15
specifically, the Office Action relies on the embodiment shown 16
in Figure 33 of Toyomasu to reject claims 1-13. However, the 17
first and second camming [sic—cam ?] members 16 and 43 of 18
Toyomasu do not operate in the same manner as set forth in 19
independent claim 1, as now amended. More specifically, the 20
camming [sic—cam ?] member 16 of Toyomasu is designed to 21
rotate and move axially while the camming [sic—cam member 22
?] 43 of Toyomasu is designed to be a stationary member. 23
Accordingly, neither the camming member 16 of Toyomasu nor 24
the camming member 43 of Toyomasu rotates but does not move 25

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axially, or moves axially but does not rotate as now set forth in 1
amended claim 1. Moreover, claim 1 now recites that the first friction 2
members moves in an axial direction but does not rotate. In the 3
cable brake device of Toyomasu, the friction member 6 is both rotated 4
and moved axially. Amendment A (Paper 7), page 5. 5
Second rejection 6
After a notice of allowance, withdrawal from issue and a filing of an 7
RCE [request for continued examination], there came a time when a second 8
rejection was entered by the Examiner. Office Action mailed 11 July 2002 9
(Paper 14). 10
At this point, the original application contained claims 1-20. 11
Claims 1-20 were rejected under 35 U.S.C. § 102(b) as anticipated by 12
Kawaguchi [U.S. Patent 3,789,959]. 13
Second amendment 14
A response to the second rejection was received by the USPTO on 08 15
November 2002. Paper 16 (Amendment B). 16
In response to the second rejection, claim 1 was again amended [some 17
bracketed matter added, limitations added by the first amendment shown in 18
bold; limitations deleted shown in strikethrough and limitations added 19
shown in underlining]: 20

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Claim 1 (twice amended). A cable disc brake comprising: 1
[1] a caliper housing; 2
[2] a first friction member movably coupled to said caliper 3
housing between a release position and a braking position; 4
[3] a second friction member coupled to said caliper housing 5
and arranged substantially parallel to said first friction member to 6
form a rotor receiving slot therebetween; and 7
[4] an actuated mechanism movably coupled to said caliper 8
housing to move said first friction member in an axial direction from 9
said release position towards said second friction member to said 10
braking position without rotating said first friction member, said 11
actuated mechanism having first and second cam members movably 12
arranged between an axially retracted position and an axially extended 13
position with a guide member interconnecting said first and second 14
cam members during movement between said axially retracted 15
position and said axially extended position, 16
one of said first and second cam members being rotatably 17
mounted within said caliper housing, and the other of said first 18
and second cam members being movably mounted in said axial 19
direction including 20
an input cam 90 [Fig. 5, col. 8:49-52] movably mounted within 21
said caliper housing 30 to move in a rotational direction about a 22
longitudinal axis [col. 8:56-61] , but not in an axial direction [input 23
cam 90 is one-piece and is axially immovably fastened to caliper 24
housing 30 via nut 97 as shown in Fig. 5], said input cam having a 25

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first camming surface 90d [Fig. 31, col. 8:65-67] with an axially 1
extending guide member 90c [Fig. 5; col. 8:62-65] non-movably fixed 2
thereto at said longitudinal axis [input cam 90, including guide 3
member 90c, is one-piece as shown in Fig. 5], and 4
an output cam 91 [Fig. 5; col. 8:49-52] movably mounted 5
within said caliper housing 30 to move in the axial direction in 6
response to rotation of said input cam 90 [col.9:33-38], but not in the 7
rotational direction [col. 9:45-49], said output cam having a second 8
camming surface 91c [Fig. 35; col. 9:31-33] with an axially extending 9
bore 91e [Fig. 34; col. 9:39-42], said guide member being at least 10
partially disposed within said bore 91e to ensure smooth relative 11
movement between said input and output cams 90, 91 [col. 9:24-27]. 12
In remarks, Shimano said inter alia the following: 13
Specifically, Applicants have amended independent 14
claim 1 to clarify that the actuated mechanism includes an input 15
cam movably mounted within said caliper housing to move in a 16
rotational direction about a longitudinal axis, but not in an axial 17
direction, said input cam having a first camming surface with 18
an axially extending guide member non-movably fixed thereto 19
at said longitudinal axis, and an output cam movably mounted 20
within said caliper housing to move in the axial direction in 21
response to rotation of said input cam, but not in the rotational 22
direction, said output cam having a second camming surface 23
with an axially extending bore, said guide member being at 24

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37
least partially disposed within said bore to ensure smooth 1
relative movement between said input and output cams. 2
* * * 3
Applicants do not believe the unique arrangements of 4
independent claim[ ] 1 . . . [is] disclosed or suggested in the 5
Kawaguchi patent. 6
Specifically, the Kawaguchi patent basically discloses a 7
disc brake which includes an operation lever 14 loosely 8
mounted to the threaded tube 12 behind a plate 13. The plate 9
13 is a pressure receiving plate while the operation lever 14 acts 10
to actuate the pressure receiving plate 13. Balls 16 are disposed 11
between the plates 13 and 14. When the operation lever 14 is 12
turned, the pressure receiving plate 13 will cause, through the 13
action of balls 16, axial movement of threaded tube 12 and the 14
adjusting screw 11 mounted therein, thereby urging pad 8 15
against the disc 2. Thus, at best, the Kawaguchi patent 16
discloses a guide member that is axially movable with the 17
axially movable plate 13. In other words, the Kawaguchi patent 18
fails to disclose or suggest the axially extending guide member 19
non-movably fixed to the input cam at the longitudinal axis, 20
where the input cam is rotatably but not axially movable, as 21
required by independent claim 1, as now amended. 22
Amendment B (Paper 16), pages 7-8. 23

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Claim 37 on appeal 1
Claim 37 on appeal deletes some limitations from claim 1 (twice 2
amended—which claim 1 of the patent), but adds other limitations. 3
Claim 37 reads [bracketed matter added, limitations deleted shown in 4
strikethrough and limitations added shown in bold]. 5
Claim 37. A cable disc brake for a bicycle comprising: 6
a caliper housing with a mounting bracket structured and 7
dimensioned to be attached to a bicycle with a cable support 8
having an opening for guiding a cable there through; 9
wherein the cable support extends from a surface of the 10
caliper housing and is not adjustable in any direction relative to 11
the surface of the caliper housing; 12
a first friction member movably coupled to said the caliper 13
housing for movement between a release position and a braking 14
position; 15
a second friction member coupled to said the caliper housing 16
and arranged substantially parallel to said the first friction member to 17
form a rotor receiving slot therebetween; and 18
an actuated mechanism movably coupled to said the caliper 19
housing to move said the first friction member in an axial direction 20
from said the release position towards said the second friction 21
member to said the braking position, said 22
wherein the actuated mechanism including 23
an input cam movably mounted within said caliper housing to 24
move in a rotational direction about a longitudinal axis, but not in an 25

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axial direction, said input cam having first camming surface with an 1
axially extending guide member non-movably fixed thereto at said 2
longitudinal axis, and 3
an output cam movably mounted within said caliper housing to 4
move in the axial direction in response to rotation of said input cam, 5
but not in the rotational direction, said output cam having a second 6
camming surface with an axially extending bore, said guide member 7
being at least partially disposed within said bore to ensure smooth 8
relative movement between said input and output cams comprises an 9
elongated actuating arm rotatably coupled to the caliper housing 10
to cause the actuated mechanism to move the first friction 11
member from the release position towards the braking position; 12
wherein the actuating arm has a curved guide surface with 13
a first portion coincident with a cable clamp and a second portion 14
that extends from the first portion towards the cable support so 15
that the cable, when coupled to the cable clamp, approaches the 16
guide surface from the opening in the cable support essentially 17
tangent to the guide surface and is supported by the guide surface 18
when the first friction member in the release position. 19
Claim 74 20
Claim 74 is similar in many respects to claim 37. However, one 21
significant difference is that claim 74 contains a "one piece" limitation 22
[drawing element numbers, italics and some discussion added]: 23

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wherein the cable support 44 is one piece with the 1
surface of the caliper housing 30 from which it extends [clearly 2
said by Shimano to be shown in Fig. 7—see also Fig. 5] 3
Shimano's position 4
According to Shimano, claim 37 recites the following limitations: 5
(1) wherein the cable support extends from a surface of 6
the caliper housing and is not adjustable in any direction 7
relative to the surface of the caliper housing, and 8
(2) wherein the actuating arm has a curved guide surface 9
with a first portion coincident with a cable clamp and a second 10
portion that extends from the first portion towards the cable 11
support so that the cable, when coupled to the cable clamp, 12
approaches the guide surface from the opening in the cable 13
support essentially tangent to the guide surface and is supported 14
by the guide surface when the first friction member is in the 15
release position. 16
Appeal Brief, pages 11-12. 17
Further according to Shimano, these limitations "materially narrow" 18
claim 37 vis-à-vis patent claim 1 (which is claim 1 of the original 19
application, twice amended). Claim 37, therefore, is said to "recite a distinct 20
invention." Appeal Brief, page 12. 21
With respect to claim 74, Shimano further argues the "one piece" 22
limitation. Appeal Brief, page 13. According to Shimano, the "one piece" 23
"feature" causes claim 74 "to recite a distinct invention and therefore 24

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materially narrow claim 74" avoids "the recapture rule according to step (3) 1
[of Clement]. Id. 2
Examiner's findings 3
The Examiner correctly found that (1) the strikethrough limitations of 4
claim 37, as reproduced above, were deleted vis-à-vis claim 1, and (2) the 5
bold limitations were added. 6
The Examiner made no findings with respect to whether (1) the added 7
bold limitations relate to an aspect of the invention overlooked (not claimed) 8
during the original prosecution and, if so, (2) whether those limitations 9
materially narrow claim 37 with respect to the overlooked aspect of the 10
invention. 11
Legal principles 12
Based on In re Clement, 131 F.3d 1464, 1470 (Fed. Cir. 1997), the 13
following principles apply. 14
Principle 1. If the reissue claim is as broad as or broader than the 15
cancelled or amended claim in all aspects, the recapture rule bars the claim. 16
Principle 2. If the reissue claim is narrower than the cancelled or 17
amended claim in all aspects, the recapture rule does not apply, but other 18
rejections (e.g., § 102, § 103, § 112) are possible. 19
Principle 3: If the reissue claim is broader in some aspects, but 20
narrower in other aspects, than the cancelled or amended claim, then: 21
Principle 3(a): if the reissue claim is as broad as or broader in 22
an aspect germane to a prior art rejection of a claim in the original 23
application, but narrower in another aspect completely unrelated to the 24
rejection, the recapture rule bars the reissue claim or 25

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Principle 3(b): if the reissue claim is narrower in an aspect 1
germane to the prior art rejection, and broader in an aspect unrelated to the 2
rejection, the recapture rule does not bar the claim, but other rejections are 3
possible. 4
Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1482-83 (Fed. Cir. 5
1998) (emphasis added; some citations omitted) has also established an 6
additional principle that: 7
[T]he recapture rule [may be avoided altogether] when the 8
reissue claims are materially narrower in other overlooked 9
aspects of the invention. The purpose of . . . [this principle] is 10
to allow the patentee to obtain through reissue a scope of 11
protection to which . . . [the patentee] is rightfully entitled for 12
such overlooked aspects. 13
See also MPEP § 1412.02(I)(C) [8th ed., Rev. 7, July 2008]. 14
By "other . . . aspects", Hester means aspects not previously claimed 15
during prosecution of the application maturing into the patent sought to be 16
reissued. 17
Accordingly, we can resolve a recapture rejection by determining 18
whether the "narrower in another aspect" (i.e., a limitation of a reissue 19
claims) was (1) overlooked during original prosecution and (2) is material. 20
Whether an aspect of a reissue claim was overlooked during original 21
prosecution is fact-based and is resolved on a case-by-case basis. 22
Whether an aspect of a reissue claim is material is also fact-based and 23
also resolved on a case-by-case basis. 24

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One way to show materiality may be to show that the reissue claim is 1
patentable over the prior art. Ex parte Bradshaw, 2007 WL 2139843, 2
slip op. at 15-20 (BPAI July 19, 2007), also available at: 3
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2006274407-4
19-2007-0. 5
Shimano's Bd. R. 41.37(d) supplemental brief 6
We were unable to find in the Appeal Brief a detailed factual analysis 7
of the "overlooked" or "material" issues. 8
We declined to resolve either issue in the first instance without 9
affording Shimano an opportunity to present its position on the relevant 10
facts. 11
An appellant, not the Board in the first instance, should set forth the 12
relevant facts upon which it bases its request for reversal of an examiner's 13
rejection. 14
To help us resolve the "recapture" rejection of claims 37 and 72-74 on 15
appeal, we invited Shimano to address several points, two of which were: 16
Point (2) 17
Point (2): Shimano was invited to address (1) why relevant 18
limitations in claims 37 and 72-74 should be considered to have been 19
"overlooked" and (2) why those limitations are "material." 20
Point (3) 21
Point (3): Shimano was invited to state its views on what criteria 22
should be used to determine whether a limitation is "material". 23
We noted that one way to show that a newly added limitation is 24
"material" is to establish that a reissue claim containing the limitation is 25

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patentable over the prior art. Ex parte Bradshaw, supra. There may be 1
alternative ways. For example, in a § 135(b) context, "material" and 2
"patentability" (i.e., obviousness) do not mean the same thing. In re Berger, 3
279 F.3d 975, 981-982 (Fed. Cir. 2002). 4
In presenting its views, we asked Shimano to address whether a 5
reissue claim can contain new limitation which can be considered "material" 6
if the reissue claim does not define subject matter patentable over the prior 7
art. 8
Shimano responded to our invitation and filed a supplemental brief. 9
Response to Request for Additional Briefing, filed 8 May 2009. 10
Resolution of the recapture rule rejections 11
In its Response to Request for Additional Briefing, Shimano states 12
(page 17) that the "one piece" limitation of claim 74 was not claimed during 13
prosecution of the application maturing into the patent sought to be reissued. 14
Shimano reasons therefore that the "one piece" limitation was "overlooked" 15
during original prosecution. 16
We have reviewed the patent claims, including Shimano's annotated 17
version of those claims as appear in the Response to Request for Additional 18
Briefing. We have been unable to find where any "one piece" limitation was 19
explicitly claimed during prosecution. The Examiner has not called our 20
attention to any "one piece" limitation in any claim involved in the 21
prosecution of the application which matured into the patent sought to be 22
reissued. 23
We will note that during original prosecution, Shimano added claim 24
21 [drawing element numbers, italics and discussion by Shimano added]: 25

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21. A cable disc brake (12a) according to claim 1, 1
wherein said input cam (90) includes a first cam member ((90a; 2
Fig. 29, col. 8:62-65) disposed within an internal bore ((46); 3
Fig. 12, col.6:42-46) of said caliper housing (30) (as shown in 4
Fig. 5). 5
For the convenience of the reader, we repeat what the specification 6
has to say about cable support flange 44 as it relates to internal bore 46 7
(col. 6:41-49) (italics added): 8
As seen in FIGS. 7-12, the left caliper portion 38 basically has a 9
body portion 42 a pair of mounting flanges 43 and a cable 10
support flange 44. The body portion 42 has a pad support 11
bore 45 extending in a longitudinal direction and an axially 12
extending internal bore 46 that extends longitudinally between 13
a first open end 48 and a second open end 50 of the left caliper 14
portion 38. The pad support bore 45 is utilized to support the 15
brake pads 32 on the caliper housing 30 as discussed below. 16
The specification also says (col. 7:33-37) (italics added): 17
As seen in FIGS. 2, 4, 7 and 8, the cable support member or 18
flange 44 extends outwardly from the body portion 42 in a 19
direction that is substantially tangent to an imaginary circle 20
with its center located at the center axis of the internal bore 46. 21
The fact that an internal bore 46 was claimed in the original patent 22
(claim 21) does not establish that Shimano did not overlook the "one piece" 23
feature of its invention. The internal bore 46 is not dependent on a "one 24
piece" element and vice-versa. 25

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On the record before us, we hold that the "one piece" element is 1
material within the meaning of Hester because it renders claim 74 patentable 2
over the prior art. Ex parte Bradshaw, supra. 3
On the record before us, we further hold that the "one piece" element 4
was overlooked within the meaning of Hester because it was not claimed 5
during prosecution of the application which matured into the patent sought 6
to be reissued. 7
On the record before us, we still further hold that, in view of the 8
resolution of the § 103 rejections, the new limitations in claims 37 and 72-73 9
are not material within the meaning of Hester, because claims 37 and 72-73 10
are not patentable over the prior art. 11
The decision of the Examiner rejecting claims 69-71 and 74 based on 12
the recapture rule is reversed. 13
The decision of the Examiner rejecting claims 37 and 72-73 (and 14
claims 38-60 depending directly or indirectly from claim 37 and not 15
separately argued in the Appeal Brief and Reply Brief with respect to the 16
recapture rule rejection) based on the recapture rule is affirmed. 17
Claims 44-46 18
In presenting the appeal via the Appeal Brief and Reply Brief, 19
Shimano did not separately address claims 44-46 with respect to the 20
recapture rule—despite the known fact that those claims were not rejected 21
over the prior art. 22
For this reason, Shimano should not be surprised that the Examiner 23
likewise did not have to, and did not, separately address claims 44-46 with 24
respect to the recapture rule rejection. 25

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In inviting Shimano to comment on the overlooked aspects of claims 1
37 and 72-74, we said: 2
Point (2) 3
Shimano should address (1) why relevant limitations in 4
claims 37 and 72-74 should be considered to have been 5
"overlooked" and (2) why those limitations are "material." 6
We limited the claims to be discussed to claims 37 and 72-74 because 7
with respect to the recapture rule those were the only claims specifically 8
addressed in the Appeal Brief and Reply Brief. 9
The request for supplemental briefing was not intended to reopen 10
prosecution or to permit Shimano to address additional claims beyond 11
claims 37 and 72-74. 12
Despite the narrow request, in its response Shimano separately 13
addresses for the first time claim 44 and claims 45-46 which depend from 14
claim 44. See Response to Request for Additional Briefing, page 8: 15
Claim 44 . . . [is] reproduced because claim 44 and dependent 16
claims 45-46 were not rejected over the prior art. 17
and page 17: 18
Pursuant to Point (1)(2), Shimano reproduced claim 44. The 19
limitations in claim 44 believed to be overlooked include the 20
text 21
"wherein the biasing mechanism comprising a spring 22
having a first end and a second end, and wherein the 23
adjusting mechanism adjusts the biasing force by moving 24

Appeal 2009-002559
Application 10/826,173

48
one of the first end and the second end relative to the 1
other one of the first end and the second end." 2
These aspects are believed to have been overlooked because 3
they were not previously claimed in conjunction with the 4
limitations of claim 37 during prosecution of the application 5
maturing into the patent sought to be reissued. 6
We decline to consider the argument or to address claims 44-46 7
separately. First, the argument was not presented in the Appeal Brief and 8
therefore was waived. Second, the argument was not presented in the Reply 9
Brief. Third, discussion of claims 44-46 was not authorized in our 10
Bd. R. 41.37(d) order. Fourth, the Examiner has not had an opportunity to 11
address the arguments. Fifth, a remand to the Examiner is not in order 12
because Shimano could have presented the arguments in the Appeal Brief 13
for consideration in the first instance by the Examiner. The rules give an 14
applicant an opportunity to argue in the Appeal Brief each claim the 15
applicant wants the Board to separately consider. Shimano did not timely 16
avail itself of the opportunity provided by the rules. Accordingly, on this 17
record, Shimano has waived it right to have claims 44-46 considered 18
separately with respect to the recapture rule rejection. The recapture rule 19
rejection of claims 44-46 therefore stands or falls with the recapture rule 20
rejection of claim 37. 21

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49
E. Decision 1
Upon consideration of the appeal, and for the reasons given herein, 2
it is 3
ORDERED that the decision of the Examiner rejecting 4
claims 43, 69-71 and 74 over the prior art is reversed. 5
FURTHER ORDERED that the decision of the Examiner 6
rejecting claims 37-42, 47-60 and 72-73 over the prior art is affirmed. 7
FURTHER ORDERED that the decision of the Examiner 8
rejecting claims 69-71 and 74 based on the recapture rule is reversed. 9
FURTHER ORDERED that the decision of the Examiner 10
rejecting claims 37-60 and 72-73 based on the recapture rule is affirmed. 11
FURTHER ORDERED that no time period for taking any 12
subsequent action in connection with this appeal may be extended under 13
37 C.F.R. § 1.136(a)(1)(iv) (2008). 14
AFFIRMED-IN-PART and REVERSED-IN-PART 15
16
saw 17
18
cc (via First Class mail)
19
DELAND LAW OFFICE 20
P.O. BOX 69 21
KLAMATH RIVER, CA 96050-006922

Appeal 2009-002559
Application 10/826,173

50
Appendix 1 1
2
Status of Claims 3
4
Claim Allowed Rejected Rejected Rejected Rejected

Recapture Le Deit Le Deit Le Deit
Carre Carre Carre
Huang Huang Huang
Isai Isai
Mott

1 x
2 x
3 x
4 x
5 x
6 x
7 x
8 x
9 x
10 x
11 x
12 x
13 x
14 x
15 x
16 x
17 x
18 x
19 x
20 x
21 x
22 x
23 x
24 x
5

Appeal 2009-002559
Application 10/826,173

51
Claim Allowed Rejected Rejected Rejected Rejected

Recapture Le Deit Le Deit Le Deit
Carre Carre Carre
Huang Huang Huang
Isai Isai
Mott

25 x
26 x
27 x
28 x
29 x
30 x
31 x
32 x
33 x
34 x
35 x
36 x
37 x x
38 x x
39 x x
40 x x
41 x x
42 x x
43 x x
44 x
45 x
46 x
47 x x
48 x x
49 x x
1

Appeal 2009-002559
Application 10/826,173

52
1
Claim Allowed Rejected Rejected Rejected Rejected

Recapture Le Deit Le Deit Le Deit
Carre Carre Carre
Huang Huang Huang
Isai Isai
Mott
50 x x
51 x x
52 x x
53 x x
54 x x
55 x x
56 x x
57 x x
58 x x
59 x x
60 x x
61 x
62 Cancelled
63 x
64 x
65 x
66 Cancelled
67 x
68 x
69 x x
70 x x
71 x x
72 x x
73 x x
74 x x
2