Ex Parte Valle

Patent Trial and Appeal Board

Nov 28, 2018

13740636 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/740,636 01/14/2013
3624 7590 11/30/2018
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Maurizio Valle
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.
CAM3-PT190.3 5309
EXAMINER
CAMPOS, JR, JUAN J
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
11/30/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURIZIO VALLE
Appeal2017-007046
Application 13/740,636 1
Technology Center 3600
Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a non-final rejection of
claims 1-11, and 13-34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and designate a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to the Appellant the real party in interest is Campagnolo S.r.l.
Appeal Br. 3.
Appeal2017-007046
Application 13/740,636
CLAIMED SUBJECT MATTER
The claims are directed to a motion transmission system of a bicycle.
Claims 1, 30, 31, 32, and 33 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. Motion transmission system of a bicycle, comprising:
an eleven sprocket assembly that mounts on a freewheel
body of a hub of a bicycle rear wheel;
a bicycle chain that is configured to engage each of the
eleven sprockets;
the hub has: a rotation axis; a first portion that includes a
plurality of spoke attachment seats in a first plane; and, a second
portion that is in a second plane that is spaced from the first plane
and immediately next to a hub portion configured for attachment
of the hub to a rear frame portion of the bicycle;
the eleven sprocket assembly is mounted on the freewheel
body with the eleven sprockets located between the first plane
and the second plane and opposite end sprockets of the eleven
sprockets are in respective planes that are parallel to both the first
plane and the second plane.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Suinaga
Nakamura
Kamada '3 3 8
Valle
Kamada
us 4,121,474
us 5,954,604
US 6,340,338 Bl
US 8,454,461 B2
US 2006/0258499 Al
2
Oct. 24, 1978
Sept. 21, 1999
Jan.22,2002
June 4, 2013
Nov. 16, 2006
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Application 13/740,636
REJECTIONS 2
Claims 1, 5-9, 15-17, 29, 32, and 33 are rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Nakamura.
The remaining rejections are based on the claims being unpatentable
under pre-AIA 35 U.S.C. § 103(a):
Claims 2--4, 10, 13, 14, 18, 19, and 25-28 over Nakamura.
Claim 11 over Nakamura, Kamada, and Kamada '338.
Claims 20-24 over Nakamura and Kamada.
Claims 1 and 30 over Kamada and Nakamura.
Claim 31 over Nakamura and Suinaga.
Claim 34 over Kamada and Nakamura, or Kamada, Nakamura,
and Official Notice.
OPINION
35 US.C. § 102(b)-Claims 1, 5-9, 15-17, 29, and 33
Independent claims 1 and 33 both require "an eleven sprocket
assembly." The Examiner finds that this assembly is taught by a grouping of
eleven sprockets (F2-F12, or F3-F13, or F4-F14, or F2-F13) of
Nakamura's sprocket cluster shown in Figure 12. Non-Final Act. 3-5, 7-8.
Appellant argues that Nakamura's sprocket assembly of Figure 12 has
fourteen ( 14) sprockets and thus would not be considered an eleven sprocket
assembly. Appeal Br. 20-22. Appellant further argues that"[ o ]ne of
ordinary skill in the art would understand an 'eleven sprocket assembly' to
have exactly eleven sprockets." Id. at 21. Appellant also cites to the
2 The nonstatutory double patenting rejection of claims 1-11 and 13-34 has
been withdrawn. Ans. 2.
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Application 13/740,636
Specification to support the argument that the sprocket assembly would be
understood to be a single unit including all of the sprockets mounted on a
freewheel. Id. ( citing Spec. ,r 96).
The Examiner does not address Appellant's argument concerning
what one of skill in the art would understand a "sprocket assembly" to be,
but rather simply responds that because the preamble to the claim uses the
term "comprising" the anticipating reference can disclose any number of
sprockets of eleven or more. Ans. 3--4. The Examiner explains: "As
'comprising' is inclusive and open ended and does not exclude additional,
unrecited elements or method steps, [p]rior [a]rt (with fifteen, twenty, or
thirty sprockets) would anticipate the claimed structure of claim 1, as long as
the prior art meets all the claimed limitations of claim 1." Id. at 4.
However, we agree with Appellant that the Federal Circuit's analysis
in Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986) is
instructive. Reply Br. 8. In Moleculon the court found that the district court
was in error by reading "comprising" to broaden the scope of the term "eight
cube pieces" to include more than eight cubes, such as a 3 x 3 x 3 Rubik's
Cube. Moleculon, 793 F.2d at 1271.
Thus, though the Examiner is correct that "'comprising' is inclusive
and ... does not exclude additional, unrecited elements," there is no reason
to believe that one of skill in the art would have understood a sprocket
cluster with fourteen (14) sprockets to be "an eleven sprocket assembly" as
required by claims 1 and 33. Thus, the Examiner's rejection fails to identify
all of the claimed structure. For this reason, we reverse the Examiner's
rejection of claims 1, 5-9, 15-17, 29, and 33 as anticipated by Nakamura
under 35 U.S.C. § 102(b).
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At the same time, Nakamura also teaches that "[t]he present invention
is directed to a bicycle drive mechanism which includes a large number of
freewheel sprockets, for example, ten or more and preferably fourteen
freewheel sprockets." Nakamura 2: 10-13. Neither the Examiner nor
Appellant addresses this teaching of Nakamura. Thus, while the Examiner
improperly relied exclusively on the embodiment of Figure 12 with fourteen
(14) sprockets, we find that the disclosure of Nakamura is not so limited.
Rather, we find that Nakamura discloses, or at least suggests, an eleven
sprocket assembly based on its teaching of "ten or more and preferably
fourteen freewheel sprockets." Eleven is only one more than ten, and the
small disclosed preferred range of sprockets from 10 to 14 not so expansive
as to make the disclosure of eleven sprockets unreasonable or mere
hindsight.
Thus, we enter a new ground of rejection of claims 1, 5-9, 15-17, 29,
and 33 under 35 U.S.C. § 102(b) as anticipated by, and under§ 103(a) as
obvious over, Nakamura. Other than the Examiner's exclusive reliance on
Figure 12, we rely on the same findings and rationale provided by the
Examiner's rejection under 35 U.S.C. § 102(b). As we rely on slightly
different reasoning, we designate our affirmance as a new ground of
rejection under 37 C.F.R. § 4I.50(b) to provide Appellant with a full and fair
opportunity to respond to the rejection. 3
3 Appellant also argues that end sprockets of the groupings F2-F12, or F3-
F13, or F4-F14, or F2-F13 of Nakamura's sprocket cluster shown in Figure
12 would not be understood to be end sprockets of the cluster. Appeal Br.
22-24. As our rejection does not rely on the Examiner's groupings, this
argument does not apply to the current rejection.
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Application 13/740,636
35 USC§ 102(b)- Claim 32
Independent claim 32 differs from claims 1 and 33, in that rather than
require an eleven sprocket assembly, claim 32 only requires "eleven
sprockets." Appellant provides argument over the positioning of the end
sprockets of Nakamura's fourteen (14) sprocket cluster. Appeal Br. 24.
However, claim 32 does not discuss "end sprockets" but rather discusses the
positioning of the eleven sprockets. Thus, Appellant's argument is not
commensurate in scope to claim 32 and does not inform us of error in the
Examiner's rejection.
35 USC§ 103(a)- Claims 2-4
Claim 2 depends from claim 1 and requires, inter alia:
the chain is comprised of an alternating succession of outer links
and of inner links, connected to each other at respective
connection ends, each link, outer and inner, comprising two
respective plates, outer and inner, arranged parallel and spaced
apart to define a space to receive a tooth of a sprocket.
The Examiner finds that Nakamura Figure 11 shows a chain having
the required structure. Non-Final Act. 8.
Appellant argues that "[t]he plates 14A-C [in Figure 11] ... are not
spaced apart such that they define a space to receive a tooth of a sprocket."
Appeal Br. 29. Rather, it is argued that they "are in direct contact with each
other and only form a space for receiving a tooth of a sprocket due to their
curved shape." Id.
The Examiner responds that "[p]lates 14A and 14C ... are spaced
apart" and that the claim "does not require the tooth of sprocket to be
received between the outer and inner plates." Ans. 14. The Examiner
further argues that "plates 14A-14C form a space for receiving a tooth of
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sprocket due to their curved shape" and that this is sufficient to meet the
claimed limitation. Id.
The Examiner's analysis overgeneralizes the claim limitations
resulting in an overly broad claim construction. Claim 2 does not merely
require two spaced apart plates, the plates having a space for receiving a
tooth of the sprocket. Rather, claim 2 requires "two respective plates, outer
and inner, arranged parallel and spaced apart to define a space to receive a
tooth of a sprocket." The claim links the relationship between the two plates
("arranged parallel and spaced apart") as defining a space with a specific
function ("to receive a tooth of a sprocket"). Thus, the Examiner's finding
that the curved shape of the plates is sufficient to meet the claimed limitation
is not supported. For this reason, we do not sustain the Examiner's rejection
of claim 2.
Claims 3 and 4 depend from claim 2. We do not sustain the
Examiner's rejection of claims 3 and 4 for the same reason as claim 2.
35 US.C. § 103(a)-Claims 10, 13, 14, 18, 19, and 25-28
Appellant argues claims 10, 13, 14, 18, 19, and 25-28 together. We
select claim 10 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 10
depends from claim 1 and requires:
wherein a sprocket of the eleven sprockets in the sprocket
assembly has the smallest diameter of the eleven sprockets and
11 or 12 teeth and a sprocket of the eleven sprockets in the
sprocket assembly has the largest diameter of the eleven
sprockets and 23 or 27 teeth.
The Examiner finds that Nakamura teaches a smallest sprocket having
eleven (11) teeth, but not a largest sprocket having 23 or 27 teeth. Non-
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Application 13/740,636
Final Act. 9. The Examiner determines that selecting 23 or 27 teeth for the
largest sprocket would be an obvious matter of design choice. Id.
Appellant argues that design choice is inappropriate because "[t]he
third-largest sprocket in the Nakamura sprocket assembly includes 30 teeth.
Nakamura, Fig. 12. Modifying the largest sprocket (which includes 39
teeth) to include 23 or 2 7 teeth would be contrary to a basic understanding of
bicycles, let alone within 'a designer's preference."' Appeal Br. 31 (some
emphasis omitted).
Appellant's focus on the teeth configuration of a single embodiment
of Nakamura is not convincing. Nowhere does the Examiner suggest that
that the rejection relies on taking the embodiment of Figure 12 and
modifying the number of teeth on one sprocket so that the largest sprocket
has less teeth than other smaller sprockets. Thus, we are not informed of
error in the rejection of claim 10.
At the same time, the rejection of claims 10, 13, 14, 18, 19, and 25-28
ultimately relies on the rejection of claim 1 which we have modified above.
As we rely on slightly different reasoning as to claim 1, we designate our
affirmance of the rejection of claims 10, 13, 14, 18, 19, and 25-28 as a new
ground of rejection under 37 C.F.R. § 4I.50(b) to provide Appellant with a
full and fair opportunity to respond to the rejection of claim 1.
35 USC§ 103(a)- Claims 11 and 20-24
Appellant relies on a single set of arguments for the rejections of
claims 11 and 20-24.
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Claim 20 depends from claim 1 and requires: "wherein at least six
consecutive sprockets in the assembly have a number of teeth that differs by
one from that of at least one adjacent sprocket."
The Examiner finds that Kamada teaches a configuration with ten (10)
sprockets where seven (7) of the sprockets have a number of teeth that
differs by one from that of the adjacent sprocket ("teeth that number 11 T,
12T, 13T, 14T, 15T, 16T, 17T"). Non-Final Act. 12. The Examiner
determines that:
it would have been obvious ... to modify the chain of Nakamura
by modifying the number of sprockets so that at least six
consecutive sprockets ( or seven consecutive sprockets, eight
consecutive sprockets, or nine consecutive sprockets) have a
number of teeth that differs by one, to follow the teaching
Kamada 499' ... to design the sprocket assembly to provide
gradual change in gear ratios of the sprocket assembly, and/or to
provide the sprockets a preferred appearance to a designers
desire, and/or to design the sprocket assembly of Nakamura to a
designer's preferences.
Id. at 13.
Appellant argues that the Examiner's reasoning to '"provide gradual
change in gear ratios' or 'provide the sprockets a preferred appearance to a
designers desire' or 'design the sprocket assembly of Nakamura to a
designer's preferences' are meritless, conclusory statements the Examiner
assumes to be true." Appeal Br. 32. Appellant admits that the prior art
teaches "provid[ing] a gradual change in gear ratios, as this is the point of
having different gears," but argues that "there is no suggestion to set the
number of gear teeth as claimed." Id.
We agree with the Examiner that Kamada teaches the added limitation
of claim 20. Thus, Kamada expressly suggests setting the number of gear
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Application 13/740,636
teeth as claimed. Appellant further admits that it is known to have a gradual
change in gear ratios. Thus, it is unclear why the Examiner's reasoning
would therefore be "meritless, conclusory statements" as asserted by
Appellant. For these reasons we are not informed of error in the Examiner's
rejection. Claim 20 is representative of claims 21-24. A similar analysis
applies to claim 11.
At the same time, the rejections of claims 11 and 20-24 ultimately
rely on the rejection of claim 1 which we have modified above. As we rely
on slightly different reasoning as to claim 1, we designate our affirmance of
the rejections of claims 11 and 20-24 as a new ground of rejection under 37
C.F.R. § 4I.50(b) to provide Appellant with a full and fair opportunity to
respond to the rejection of claim 1.
35 USC§ 103(a)- Claim 31
Independent claim 31 differs from claims 1 and 33, in that rather than
requiring an eleven sprocket assembly, claim 31 only requires "a grouping
of eleven sprockets." Appellant provides argument over the positioning of
Nakamura's fourteen (14) sprocket cluster in view of the teachings of
Suniaga. Appeal Br. 37-384• Arguments presented in an appeal must
address the grounds of rejection set forth by the Examiner. 37 C.F.R.
§ 4I.37(c)(l)(iv). The rejection does not rely on all fourteen sprockets in
Nakamura's Figure 12. This is because the claim merely requires "a
grouping of eleven sprockets." Thus, Appellant's arguments are not
4 The Appeal Brief includes a typographical error listing claim 30 instead of
claim 31.
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Application 13/740,636
commensurate in scope with the claim and we are not informed of error in
the rejection.
35 USC§ 103(a)- Claims 1 and 30
As noted previously, independent claim 1 requires "an eleven sprocket
assembly." Claim 30 similarly requires "eleven sprockets that define a
sprocket assembly." Claims 1 and 30 also define the location of the sprocket
assembly as being between a rear wheel hub and a frame attachment portion.
The Examiner finds that Kamada teaches a ten sprocket assembly in
the required location, as well as a "desire to increase the number of
sprockets to provide additional different gear ratios for bicycle
transmissions." Non-Final Act. 14 (citing Kamada ,r 5) (emphasis omitted)."
The Examiner finds that Nakamura teaches a sprocket assembly with more
than 10 sprockets. Id. The Examiner then determines that it would have
been obvious to modify Kamada in view of Nakamura "to increase the
number of sprockets to provide additional different gear ratios for bicycle
transmissions." Id. ( emphasis omitted).
The Examiner also determines, as an alternative or additional reason
to combine, that mere duplication of parts involves only routine skill in the
art. Id.
Appellant argues "that both references specifically teach away from
adding an additional sprocket that would still fit within the claimed space
between the planes." Appeal Br. 33. Appellant first highlights Kamada's
discussion of the prior art where it states that "it can be difficult or even
impossible to mount the ten (10) speed rear sprocket assemblies." Id. at 34
(quoting Kamada ,r 6). Appellant does not discuss how this prior art
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discussion is relevant to Kamada's invention which teaches a ten (10)
sprocket assembly. Appellant also does not discuss why this one statement
concerning the prior art amounts to a teaching away in view of Kamada's
solution for achieving a ten (10) sprocket assembly. As noted by the
Examiner, Kamada expressly teaches that there is a desire in the art to
increase the number of speeds and gear ratios. Non-Final Act. 14 ( citing
Kamada ,r 5). Difficultly in achieving this desire is not a teaching away,
especially in the face of Kamada's teaching overcoming this difficulty.
Appellant next addresses Nakamura, arguing that "[t]he Nakamura
design, which specifically teaches placing an end sprocket 'laterally
inwardly of an outer side surface of a hub flange,' is not an acceptable
solution for reaching eleven sprockets as claimed." Appeal Br. 34 ( citing
Nakamura, 5:3---6). The Appeal Brief does not explain why this is the case,
but points us to paragraphs 14--16 of the Declaration of Maurizio Valle5. Id.
Paragraphs 14--16 of the Declaration discuss teachings to modify
Nakamura to use a conventional chain. It is not clear how this discussion is
relevant to the present rejection which makes no reference to conventional
chains.
Elsewhere the Declaration does discuss Nakamura's embodiment of
Figure 12 with fourteen (14) sprockets, but it does not address the current
rejection which relies on Nakamura to suggest adding only one additional
sprocket to the sprocket assembly of Kamada. Teachings surrounding a
5 The Valle Declaration appears to have been previously entered in response
to an office action, but was not filed with the Appeal Brief. The Valle
Declaration was attached as Exhibit A to the Reply Brief.
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specific embodiment do not amount to a teaching away of other
configurations.
For these reasons, we are not informed of error in the Examiner's
rejection of claims 1 and 30.
35 USC§ 103(a)- Claim 34
Claim 34 depends from claim 1 and requires:
a chain having an alternating succession of outer links comprised
of two parallel plates and inner links comprised of two parallel
plates, the outer and inner links are connected to each other at
respective connection and are spaced apart to define a sprocket
tooth receiving space between the two parallel inner plates and
the chain has a maximum thickness, as measured at the parallel
outer links, between and including 4.6 mm and 5.8 mm.
The Examiner finds that both Kamada and Nakamura teach a
conventional chain design as claimed. Non-Final Act. 16. Appellant argues
that Kamada only teaches using a conventional chain for a ten sprocket
assembly and Nakamura only teaches using a conventional chain for a
sprocket assembly with nine or fewer sprockets. Appeal Br. 36. Appellant
argues the Nakamura teaches a different type of chain for a sprocket
assembly with ten or more sprockets.
Though Appellant has identified what is explicitly taught by Kamada
and Nakamura, Appellant has not shown why it would not have been
obvious to use a conventional chain with an eleven sprocket assembly.
Thus, we are not informed of error in the Examiner's rejection.
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DECISION
The Examiner's rejection of claims 1, 5-9, 15-17, 29, and 33 under
pre-AIA 35 U.S.C. § 102(b) is reversed.
As a new ground of rejection, claims 1, 5-9, 15-17, 29, and 33 are
rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Nakamura, or,
alternatively, under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Nakamura.
The Examiner's rejection of claim 32 under pre-AIA 35 U.S.C.
§ 102(b) is affirmed.
The Examiner's rejections of claims 2--4, 10, 11, 13, 14, and 18-28
under pre-AIA 35 U.S.C. § 103(a) are reversed.
As a new ground of rejection, claims 10, 13, 14, 18, 19, and 25-28 are
rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Nakamura.
As a new ground of rejection, claim 11 is rejected under pre-AIA
35 U.S.C. § 103(a) as obvious over Nakamura, Kamada, and Kamada '338.
As a new ground of rejection, claims 20-24 are rejected under pre-
AIA 35 U.S.C. § 103(a) as obvious over Nakamura and Kamada.
The Examiner's rejections of claims 1, 30, 31, and 34 under pre-AIA
35 U.S.C. § 103(a) are affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 13/740,636
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
AFFIRMED-IN-PART with NEW GROUNDS OF REJECTION ENTERED
under 37 C.F.R. § 4I.50(b)
15