Ex Parte Kodama et al

Patent Trial and Appeal Board

Jul 25, 2016

12710563 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121710,563 02/23/2010
22919 7590 07/27/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Michihiro KODAMA
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.
SN-US095263 8992
EXAMINER
STERLING, AMY JO
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHIHIRO KODAMA, NOBUKATSU HARA, and
TOSHIKUNI SUZUKI
Appeal2014-002805
Application 12/710,563
Technology Center 3600
Before: CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
17. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-002805
Application 12/710,563
CLAIMED SUBJECT MATTER
The claims are directed to a height adjustable seatpost assembly.
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
A height adjustable seatpost assembly comprising:
first and second tubes being telescopically arranged;
a ratchet mechanism including a ratchet tooth structure and a
pawl structure, the pawl structure being engaged with the ratchet
tooth structure in a lock position, and the pawl structure being
movably coupled with respect to the ratchet tooth structure in a
movable position such that the first and second tubes are
movably arranged relative to each other in at least one axial
direction of the first and second tubes; and
a drive source operatively connected to the pawl structure to
move the pawl structure between the lock position and the
movable position in response to operation of the drive source, the
drive source further being operatively connected between the
first and second tubes to axially ;nave the first and second tubes
relative to each other in response to operation of the drive
source.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sittig
Heckmann
Strater
Larkin
Cheng
Nielsen
us 390,406
us 4,627,591
us 5,031,869
US 6,296,408 B 1
US 7,837,201 B2
US 8,056,489 B2
2
Oct. 2, 1888
Dec. 9, 1986
July 16, 1991
Oct. 2, 2001
Nov. 23, 2010
Nov. 15, 2011
Appeal2014-002805
Application 12/710,563
REJECTIONS
Claims 1, 3---6, 10-13, 16, and 17 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sittig.
Claims 2 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sittig, Heckmann, and Strater.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sittig, Heckmann, and Nielsen.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sittig, Heckmann, and Larkin.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Heckmann, Sittig, and Cheng.
OPINION
The critical issue with respect to each of the rejections before us is
whether the Examiner reasonably interpreted the limitation italicized above
to include, as the "drive source," levers G and rod D of Sitting. App. Br. 9.
There is no dispute that levers G and rod D of Sitting do not actually cause
Sittig's tubes B, C to "axially move." Rather, as the Examiner
acknowledges, levers G and rod D simply provide the tubes with the "ability
or freedom to move." Ans. 9.
In a broad sense, the phrase "to axially move," itself, could be
reasonably interpreted as meaning allowing, or setting the stage for,
movement to occur by, for example, some other mechanism. However,
when the phrase is read, as it must be, in conjunction with the claim
requirement that the relative movement between the tubes is "in response to
operation of the drive source," one skilled in the art would understand there
to be a causal connection between operation of the drive source and actual
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Appeal2014-002805
Application 12/710,563
axial movement between the tubes. Sittig's tubes themselves may "have a
'response to'" operation of the levers G and rod D in that they become
unlocked. Ans. 9 (emphasis added). However, that response is not "to
axially move," as the claim requires.
As all the rejections before us are predicated on an unreasonably
broad claim construction, they cannot be sustained.
DECISION
The Examiner's rejections are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED
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