Ex Parte NonoshitaDownload PDFBoard of Patent Appeals and InterferencesFeb 24, 200910856779 (B.P.A.I. Feb. 24, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TETSU NONOSHITA ____________________ Appeal 2008-3971 Application 10/856,779 Technology Center 3600 ____________________ Decided:1 February 24, 2009 ____________________ Before: WILLIAM F. PATE, III, JOHN C. KERINS, and STEVEN D.A. McCARTHY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or the Notification Date (electronic delivery). Appeal 2008-3971 Application 10/856,779 2 STATEMENT OF THE CASE 1 The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 2 rejection of claims 1-9 and 13-20 under 35 U.S.C. § 103(a) (2002) as being 3 unpatentable over Valle (US 2003/0019324 A1, publ. Jan. 30, 2003) and 4 Payne (US 4,339,017, issued Jul. 13, 1982); and the final rejection of claims 5 10-12 under § 103(a) as being unpatentable over Valle, Payne and Ording 6 (US 2003/0051573 A1, publ. Mar. 20, 2003). We have jurisdiction under 35 7 U.S.C § 6(b) (2002). 8 We AFFIRM the rejections of claims 1-10, 12-15 and 17-20. We 9 REVERSE the rejections of claims 11 and 16. 10 The claims on appeal relate to a bicycle crank designed so that wear 11 of the crank arm can be noticed easily. (Spec. 1, ¶ 1). Claim 1 is typical of 12 the claims on appeal: 13 14 1. A bicycle crank arm comprising: 15 a first end portion configured to be coupled 16 to a bicycle crank shaft; 17 a second end portion configured to have 18 pedal rotatably coupled thereto; and 19 a center portion extending between the first 20 and second end portions, 21 the bicycle crank arm including a core 22 material arranged in an area between the first and 23 second end portions, and an outer material 24 covering the core material, 25 the outer material having a first layer formed 26 such that it covers the core material and a second 27 layer of fiber cloth covering the first layer, with a 28 marking layer arranged between the first and 29 second layers that can be distinguished from the 30 second layer when observed visually after the 31 second layer of fiber cloth has worn away. 32 Appeal 2008-3971 Application 10/856,779 3 Valle discloses a crank including a pre-formed foamed plastic 1 material core with a homogenous carbon fiber casing enclosing the core. 2 (Valle, col. 2, ¶¶ 0017 and 0021). Payne discloses a molded, seamless skirt 3 for an air cushion vehicle. (Payne, col. 1, ll. 5-7). Payne describes adding 4 color coded or differently colored layers of polyurethane to the skirt to act as 5 wear indicators in the event that some of the layers are worn off by abrasion 6 during use. (Payne, col. 5, ll. 40-42 and 46-49). 7 8 ISSUES 9 The Appellant argues claims 1-3, 13, 17, 19 and 20 as a group for 10 purposes of contesting the rejection of these claims under § 103(a) as being 11 unpatentable over Valle and Payne. (App. Br. 17). Claim 1 is representative 12 of the group. 37 C.F.R. § 41.37(c)(1)(viii) (2007). The Examiner finds that 13 Valle discloses each element of claim 1 except that Valle does not disclose a 14 marking layer arranged between first and second layers that can be 15 distinguished from the second layer when observed visually after the second 16 layer of fiber cloth has worn away. (Ans. 4). The Examiner concludes that 17 it would have been obvious in view of the teachings of Payne to provide 18 Valle’s bicycle crank with a marking layer in order to act as a wear indicator 19 in the event that the second layer is worn off through abrasion. (Ans. 4-5). 20 The Appellant’s contentions raise two issues: 21 Is Payne non-analogous art? (See App. Br. 15). 22 Has the Appellant shown that the Examiner failed to 23 articulate reasoning having rational underpinning to support the 24 conclusion that Valle and Payne would have suggested a 25 bicycle crank arm including a marking layer arranged between 26 Appeal 2008-3971 Application 10/856,779 4 a first layer of fiber cloth and a second layer of fiber cloth 1 covering the first layer? (See App. Br. 16). 2 The Appellant argues claims 4 and 14 as a group (App. Br. 17); 3 claims 5 and 6 as a group (App. Br. 18); and claims 7-9 as a group (id.). The 4 Appellant argues claims 15, 16 and 18 separately (App. Br. 19, 20 and 23), 5 although the Appellant’s contentions regarding claim 18 raise no issues 6 separate from those raised in connection with the rejection of claims 7-9. 7 The Appellant’s contentions concerning the rejection of these claims raise 8 four additional issues: 9 Has the Appellant shown that the Examiner failed to 10 articulate reasoning having rational underpinning to support the 11 conclusion that Valle and Payne would have suggested a 12 bicycle crank arm including a differently-colored marking layer 13 arranged between a first layer and a second layer of fiber cloth 14 covering the first layer? (See App. Br. 17). 15 Has the Appellant shown that the Examiner failed to 16 articulate reasoning having rational underpinning to support the 17 conclusion that Valle and Payne would have suggested a 18 bicycle crank arm including a marking layer arranged between 19 a first layer of fiber cloth and second layer including a single 20 layer of fiber cloth covering the first layer? (See App. Br. 18 21 and 19-20). 22 Has the Appellant shown that the Examiner failed to 23 articulate reasoning having rational underpinning to support the 24 conclusion that Valle and Payne would have suggested a 25 bicycle crank arm including a marking layer arranged between 26 Appeal 2008-3971 Application 10/856,779 5 first and second layers of carbon fiber material? (See App. Br. 1 22). 2 Has the Appellant shown that the Examiner failed to 3 articulate reasoning having rational underpinning to support the 4 conclusion that Valle and Payne would have suggested a 5 bicycle crank arm including a marking layer including aramid 6 fiber cloth arranged between first and second layers of carbon 7 fiber material? (See App. Br. 23 and 24-25). 8 The Appellant argues claims 10 and 12 as a group for purposes of the 9 rejection of the claims under § 103(a) as being unpatentable over Valle, 10 Payne and Ording. The Appellant argues claim 11 separately. (App. Br. 11 24). The Appellant’s contentions regarding the rejection of claims 10-12 do 12 not raise any additional issues separate from those already raised in 13 connection with the rejection of claims 1-9 and 13-20. (See App. Br. 24-25). 14 15 FINDINGS OF FACT 16 The record supports the following findings of fact (“FF”) by a 17 preponderance of the evidence. 18 1. Valle’s bicycle crank is manufactured using a pre-formed 19 foamed plastic material core 10 of an elongated shape. (Valle 1 ¶ 0017). 20 2. Valle’s bicycle crank is manufactured by uniting inserts 24, 26 21 to the ends of the pre-formed core 10 using couplings 16, 18. (Valle 1, 22 ¶¶ 0017 and 0019). 23 3. Once the inserts 24, 26 are united to Valle’s pre-formed core 24 10, the core 10 is wrapped in tapes 36 and sheet 38 formed by structural high 25 Appeal 2008-3971 Application 10/856,779 6 resistance fibers incorporated in a plastic material matrix. (Valle 1, ¶ 0020). 1 The tapes 36 and the sheets 38 are layers on the core 10. (Valle 1, ¶ 0019). 2 4. The structural fibers can be selected among carbon fibers and 3 aramidic fibers. (Id.) 4 5. Preferably, Valle’s tapes 36 and sheets 38 are made of carbon 5 fiber fabric incorporated in a thermoplastic resin. (Id.) 6 6. After Valle’s pre-formed core 10 is wrapped in the tapes 36 and 7 sheets 38, the wrapped core is pressure molded and the polymer material 8 matrix is hardened to form a homogeneous carbon fiber casing 40 enclosing 9 the pre-formed core 10 and the inserts 24, 26. (Valle 1, ¶¶ 0020-21). 10 7. Valle discloses that the pre-formed core 10 does not contribute 11 substantially to the structural resistance of the crank. The structural 12 characteristic part of Valle’s crank is the carbon fiber casing 40, which 13 presents a high-resistance and is capable of transferring the force and torque 14 between the inserts 24, 26 during the use of the crank. (Valle 2, ¶ 0024). 15 8. Payne’s air cushion vehicle skirt is formed from a flexible sheet 16 material including a fabric substrate 26 (Payne, col. 3, ll. 36-39). A portion 17 of the fabric substrate is coated on opposite surfaces with polyurethane. 18 (Payne, col. 4, ll. 2-6). 19 9. Payne’s fabric substrate is triaxially woven from high strength, 20 high modulus aramid fiber material. (Payne, col. 3, ll. 51-57). 21 10. Payne discloses that additional or further layers of polyurethane 22 may be sprayed onto the skirt to build up or reinforce the walls. Subsequent 23 coatings may be color coded or differently colored to act as wear indicators 24 in the event that some layers are worn off through abrasion in use. (Payne, 25 col. 5, ll. 40-42 and 46-49). 26 Appeal 2008-3971 Application 10/856,779 7 PRINCIPLES OF LAW 1 A claim under examination is given its broadest reasonable 2 interpretation consistent with the underlying specification. In re American 3 Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 4 absence of an express definition of a claim term in the specification, the 5 claim term is given its broadest reasonable meaning in its ordinary usage as 6 the term would be understood by one of ordinary skill in the art. In re ICON 7 Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 8 127 F.3d 1048, 1054 (Fed. Cir. 1997). Limitations not explicit or inherent in 9 the language of a claim cannot be imported from the specification. E-Pass 10 Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 11 A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 12 “the differences between the subject matter sought to be patented and the 13 prior art are such that the subject matter as a whole would have been obvious 14 at the time the invention was made to a person having ordinary skill in the 15 art to which said subject matter pertains.” In Graham v. John Deere Co., 16 383 U.S. 1 (1966), the Supreme Court set out factors to be considered in 17 determining whether claimed subject matter would have been obvious: 18 19 Under § 103, the scope and content of the prior art 20 are to be determined; differences between the prior 21 art and the claims at issue are to be ascertained; 22 and the level of ordinary skill in the pertinent art 23 resolved. Against this background, the 24 obviousness or nonobviousness of the subject 25 matter is determined. 26 27 Id., 383 U.S. at 17. 28 Appeal 2008-3971 Application 10/856,779 8 The inquiry into the scope and content of the prior art includes an 1 analogous art test. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). The 2 established precedent of our reviewing court sets up a two-fold test for 3 determining whether art is analogous: “First, we decide if the reference is 4 within the field of the inventor’s endeavor. If it is not, we proceed to 5 determine whether the reference is reasonably pertinent to the particular 6 problem with which the inventor was involved.” In re Deminski, 796 F.2d 7 436, 442 (Fed. Cir. 1986). 8 The Appellant does not rely on any objective evidence of patentability 9 in this appeal. (See App. Br. 31). Therefore, the Appellant’s burden in this 10 appeal is to show that the Examiner has identified insufficient evidence to 11 support a conclusion of prima facie obviousness. Kahn, 441 F.3d at 985-86 12 (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). On the other 13 hand, “rejections on obviousness grounds cannot be sustained by mere 14 conclusory statements; instead, there must be some articulated reasoning 15 with some rational underpinning to support the legal conclusion of 16 obviousness.” Kahn, 441 F.3d at 988. The Examiner “need not seek out 17 precise teachings directed to the specific subject matter of the challenged 18 claim” to support the conclusion of obviousness, for the Examiner’s 19 reasoning “can take account of the inferences and creative steps that a 20 person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, 21 Inc., 550 U.S. ___, 127 S. Ct. 1727, 1741 (2007). 22 23 ANALYSIS 24 Payne is reasonably pertinent to the particular problem with which the 25 Appellant was involved. The Appellant’s Specification states that: 26 Appeal 2008-3971 Application 10/856,779 9 1 When the rider is pedaling, the inside face 2 portions of the rider’s shoes generally contact the 3 crank arms. This can cause the surfaces of the 4 crank arms that are contacted by the inside face 5 portions of the rider’s shoes to become worn with 6 use (e.g., after extended and/or prolonged use). 7 This holds true for the conventional type of crank 8 arms described above. However, since the crank 9 arms are located on a lower portion of the bicycle, 10 the rider does not easily notice the wear due to the 11 crank arms being normally out of the rider’s line of 12 sight. Alternatively, even if the rider notices the 13 wear on the crank arms, the rider can not know the 14 extent of the wear on the crank arms. 15 16 (Spec. 1, ¶ 0005). Consequently, one of the Appellant’s objects is “to make 17 it possible to notice the wear of a bicycle crank arm easily.” (Spec. 2, 18 ¶ 0007). In other words, one problem with which the Appellant was 19 involved is making the wear of the carbon fiber cloth or fiber-containing 20 polymer sheets forming the outer layer of the crank arm easily noticeable. 21 Payne discloses the use of successive, differently colored layers of 22 polymeric material to act as wear indicators in the event that some layers are 23 worn off. (FF 10). The Appellant protests that those of ordinary skill in the 24 art of bicycle crank arm design would have balanced a unique set of goals or 25 parameters, such as aesthetically pleasing appearance, high rigidity, high 26 strength, light weight and reliability against failure. (App. Br. 15). 27 Although this unique set of goals and parameters may affect the manner in 28 which one of ordinary skill in the art might apply the teachings of Payne, 29 Payne’s disclosure is reasonably pertinent to the problem with which the 30 Appellant was involved. Payne is not non-analogous art. 31 Appeal 2008-3971 Application 10/856,779 10 The mere application of a known technique to a piece of prior art 1 ready for the improvement would be obvious if the application is within the 2 level of ordinary skill in the art and if the results of the application are 3 predictable. See KSR Int’l, 127 S. Ct. at 1740. Valle discloses wrapping a 4 pre-formed foamed plastic material core in the tapes and sheets formed by 5 structural high resistance fibers incorporated in a plastic material matrix; 6 molding the wrapped core; and hardening the plastic matrix material to form 7 a homogeneous carbon fiber casing enclosing the pre-formed core. (FF 3 8 and 6). The tapes and sheets are layered on the core. (FF 3). Payne 9 discloses forming layers of polymer material over a fabric substrate. (FF 10 10). Payne teaches forming the layers of different colors to act as wear 11 indicators in the event that some layers are worn off. (FF 10). 12 The Appellant does not appear to argue that the problem of making 13 the wear of the surface of a crank arm easily noticeable was unknown to 14 those of ordinary skill in the art at the time the claimed subject matter was 15 made. Payne would have suggested how one of ordinary skill in the art 16 might address this problem. In view of the nature of the problem and 17 Payne’s proposed solution, it would have been obvious to one of ordinary 18 skill in the art to use tapes and sheets of different colors when wrapping the 19 pre-formed core of Valle’s crank to act as wear indicators in the event that 20 the outer layers of the casing are worn off. Valle discloses wrapping the 21 core with carbon fiber cloth tapes or sheets before molding the wrapped core 22 to form the casing. (FF 5). In view of this teaching and in view of the set of 23 goals or parameters such as aesthetically pleasing appearance, high rigidity, 24 high strength, light weight and reliability against failure balanced by those of 25 ordinary skill in the art in designing bicycle crank arms, it would have been 26 Appeal 2008-3971 Application 10/856,779 11 a matter of mere design choice to select carbon fiber cloth as the material of 1 the tapes or sheets used to form the outermost layers of the casing. 2 Therefore, Valle and Payne would have suggested a bicycle crank arm 3 including a marking layer arranged between a first layer and a second layer 4 of fiber cloth covering the first layer. The Appellant does not suggest that 5 the use of tapes or sheets of different color would have been beyond the 6 level of ordinary skill in the art. Neither does the Appellant suggest that the 7 results of using tapes or sheets of different color would have led to any 8 results which one of ordinary skill in the art could not have predicted. 9 The Appellant argues that Payne teaches away from the subject matter 10 of claim 1 because Payne discloses forming differently layers of 11 polyurethane material covering a layer of fabric made from aramid fibers 12 rather than a marking layer covered by a fiber cloth. (See App. Br. 15; see 13 also FF 8-10). “The test for obviousness is not whether the features of a 14 secondary reference may be bodily incorporated into the structure of the 15 primary reference . . . . Rather, the test is what the combined teachings of 16 the references would have suggested to those of ordinary skill in the art.” In 17 re Keller, 642 F.2d 413, 425 (CCPA 1981). In order to reach the conclusion 18 that Valle and Payne would have suggested the first layer, marking layer and 19 second layer of claim 1, it is unnecessary to posit that one of ordinary skill in 20 the art would have substituted layers of differently colored polyurethane for 21 tapes or sheets formed by structural high resistance fibers incorporated in a 22 plastic material matrix: since Valle teaches that the casing of the bicycle 23 crank bears most of the load borne by the crank (FF 7), it is unlikely that one 24 of ordinary skill in the art would have done so. Instead, one of ordinary skill 25 in the art would have applied the technique disclosed by Payne in 26 Appeal 2008-3971 Application 10/856,779 12 accordance with goals or parameters such as aesthetically pleasing 1 appearance, high rigidity, high strength, light weight and reliability against 2 failure. These goals or parameters would have led one of ordinary skill in 3 the art to use differently colored tapes or sheets formed by structural high 4 resistance fibers incorporated in a plastic material matrix in order to 5 maintain the appearance, rigidity and strength of the casing. 6 It follows immediately from the foregoing discussion that Valle and 7 Payne would have suggested a bicycle crank arm including a differently-8 colored marking layer arranged between a first layer and a second layer of 9 fiber cloth covering the first layer. Since Valle discloses the use of layers of 10 carbon fiber fabric to form the entire casing which encloses the pre-formed 11 core (FF 5), it would have been a matter of mere design choice to use carbon 12 fiber cloth for both the first and second layers between which the marking 13 layer is arranged. The use of a second or outer layer including a single layer 14 of carbon fiber cloth rather than multiple layers of carbon fiber cloth also 15 would have been a matter of mere design choice, predicated on how much 16 wear the designer would wish to permit before a differently colored layer is 17 exposed. 18 The Examiner provides no reasoning beyond the conclusory statement 19 that “VALLE teaches the marking layer including an aramid fiber cloth” 20 (Answer 6) and a citation page 1, paragraph 0020 of Valle to support the 21 conclusion that the subject matter of claim 11 would have been obvious 22 from Valle, Payne and Ording and that the subject matter of claim 16 would 23 have been obvious from Valle and Payne. Although Valle discloses that the 24 tapes and sheets used to wrap the pre-formed core to form the casing may be 25 made of carbon fibers or aramidic fibers incorporated in a thermosetting 26 Appeal 2008-3971 Application 10/856,779 13 resin (FF 4), Valle does not disclose or suggest wrapping the pre-formed 1 core with alternate layers of carbon fiber material, aramid fiber cloth and 2 carbon fiber material. In particular, page 1, paragraph 0020 of Valle fails to 3 disclose this arrangement. The Examiner’s reasoning in support of the 4 conclusions that claims 11 and 16 would have been obvious lacks rational 5 underpinning. 6 7 CONCLUSIONS 8 Payne is not non-analogous art. 9 The Appellant has not shown that the Examiner failed to articulate 10 reasoning having rational underpinning to support the conclusion that Valle 11 and Payne would have suggested a bicycle crank arm including a marking 12 layer arranged between a first layer and a second layer of fiber cloth 13 covering the first layer. Therefore, the Appellant has not shown that the 14 Examiner erred in rejecting claims 1-3, 13, 17, 19 and 20 under § 103(a) as 15 being unpatentable over Valle and Payne. In addition, the Appellant has not 16 shown that the Examiner erred in rejecting claims 10 and 12 under § 103(a) 17 as being unpatentable over Valle, Payne and Ording. Likewise, the 18 Appellant has not shown that the Examiner erred in rejecting claims 4 and 19 14 under § 103(a) as being unpatentable over Valle and Payne. 20 The Appellant has not shown that the Examiner failed to articulate 21 reasoning having rational underpinning to support the conclusion that Valle 22 and Payne would have suggested a bicycle crank arm including a marking 23 layer arranged between first and second layers of fiber cloth. Therefore, the 24 Appellant has not shown that the Examiner erred in rejecting claims 5 and 6 25 under § 103(a) as being unpatentable over Valle and Payne. 26 Appeal 2008-3971 Application 10/856,779 14 The Appellant has not shown that the Examiner failed to articulate 1 reasoning having rational underpinning to support the conclusion that Valle 2 and Payne would have suggested a bicycle crank arm including a marking 3 layer arranged between a first layer of fiber cloth and second layer including 4 a single layer of fiber cloth covering the first layer. Therefore, the Appellant 5 has not shown that the Examiner erred in rejecting claims 7-9 and 18 under 6 § 103(a) as being unpatentable over Valle and Payne. 7 The Appellant has not shown that the Examiner failed to articulate 8 reasoning having rational underpinning to support the conclusion that Valle 9 and Payne would have suggested a bicycle crank arm including a marking 10 layer arranged between first and second layers of carbon fiber material. 11 Therefore, the Appellant has not shown that the Examiner erred in rejecting 12 claim 15 under § 103(a) as being unpatentable over Valle and Payne. 13 The Appellant has shown that the Examiner failed to articulate 14 reasoning having rational underpinning to support the conclusion that Valle 15 and Payne would have suggested a bicycle crank arm including a marking 16 layer including aramid fiber cloth arranged between first and second layers 17 of carbon fiber material. Therefore, the Appellant has shown that the 18 Examiner erred in rejecting claim 16 under § 103(a) as being unpatentable 19 over Valle and Payne. In addition, the Appellant has shown that the 20 Examiner erred in rejecting claim 11 under § 103(a) as being unpatentable 21 over Valle, Payne and Ording. 22 23 DECISION 24 We AFFIRM the rejections of claims 1-10, 12-15 and 17-20 25 We REVERSE the rejections of claims 11 and 16. 26 Appeal 2008-3971 Application 10/856,779 15 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37 2 C.F.R. § 1.136(a)(1)(iv) (2007). 3 4 AFFIRMED-IN-PART 5 6 7 8 9 10 11 12 hh 13 14 15 GLOBAL IP COUNSELORS, LLP 16 1233 20TH STREET, NW, SUITE 700 17 WASHINGTON, DC 20036-2680 18 Copy with citationCopy as parenthetical citation