Ex Parte 7757582 et al

Board of Patent Appeals and Interferences

Mar 29, 2012

90011360 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,360 11/30/2010 7757582 SN-US105221R 8668
22919 7590 03/29/2012
GLOBAL IP COUNSELORS, LLP
1233 20TH STREET, NW, SUITE 700
WASHINGTON, DC 20036-2680
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHIMANO, INC.1
Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Shimano, Inc. is the real party in interest (App. Br. 4).
2 Issued July 20, 2010 to Kua et al. (hereinafter "'582 patent").
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The Patent Owner (hereinafter "Appellant") appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claims 1-4, 10-16 and
18.3 (App. Br. 6; Ans. 3). An oral hearing with the Appellant's
representative was held before the Board of Patent Appeals and
Interferences on March 14, 2012, a transcript of which will be entered into
the record in due course. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306 (2002).
The invention is directed to a bicycle component mounting structure
that may be used to mount shifters, derailleurs or other bicycle components
to a bicycle frame. Representative independent claims 1 and 2 reads as
follows (Claims-Appendix, emphasis added):

1. A bicycle component mounting structure
comprising:
a bicycle component;
a band coupled to the component and configured to
partially extend around a bicycle frame portion having a
tubular shaped outer surface, the band having a first end
and a second end spaced apart from one another with the
band extending partially around the bicycle frame
portion; and
a band tightener extending between the first end
and the second end to tighten the band on the bicycle
frame portion by drawing the first end and the second
end toward one another, a portion of the band tightener
including a contact surface oriented such that the contact
surface tangentially contacts the tubular shaped surface

3 Whereas the Appellant states that the status of claims 19 and 20 is
uncertain in view of the Advisory Action (App. Br. 6), the Examiner
clarifies that claims 19 and 20 are patentable (Ans. 9).
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of the bicycle frame portion with the band tightened on
the bicycle frame portion,
the band tightener including a threaded fastener
and a threaded nut that includes the contact surface, the
band having a first end and a second end defining an
adjustable gap therebetween, the first and second ends of
the band being disposed axially between the threaded nut
and a head of the threaded fastener with respect to a
central longitudinal axis of the threaded fastener, and the
threaded fastener and the threaded nut being arranged to
squeeze the first and second ends together to adjust a size
of the adjustable gap.

2. A bicycle component mounting structure
comprising:
a bicycle component;
a band coupled to the component and configured to
partially extend around a bicycle frame portion having a
tubular shaped outer surface, the band having a first end
and a second end spaced apart from one another with the
band extending partially around the bicycle frame
portion; and
a band tightener extending between the first end
and the second end to tighten the band on the bicycle
frame portion by drawing the first end and the second
end toward one another, a portion of the band tightener
including a contact surface oriented such that the contact
surface tangentially contacts the tubular shaped surface
of the bicycle frame portion with the band tightened on
the bicycle frame portion,
the portion of the band tightener being configured
to deform in response to contact between the contact
surface and the bicycle frame portion with the band
tightened around the bicycle frame portion.

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Independent claim 18 is similar to claim 2 but specifies that the nut
includes at least one projection that is configured to deform in response to
tangential contact between the contact surface and the bicycle frame portion.

The Examiner rejects claim 1 under 35 U.S.C. § 102(b) as anticipated
by Nagano.4
The Examiner rejects claim 18 under 35 U.S.C. § 102(b) as
anticipated by Hitchcock.5
The Examiner rejects claims 2-4 and 10-13 under 35 U.S.C. § 102(b)
as anticipated by Seto.6
The Examiner rejects claims 14-16 under 35 U.S.C. § 103(a) as
unpatentable over Seto in view of the acknowledged prior art in the '582
patent.
The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Dunn7 in view of Hitchcock.
We REVERSE.

4 Japanese Utility Model Application No. S59-177591, published November
27, 1984 (citations to English translation).

5 U.S. Patent No. 1,561,432, issued November 10, 1925.

6 Japanese Utility Model Application No. 53-153343, registered May 9,
1977 (citations to English translation).

7 U.S. Patent No. 5,860,577, issued January 19, 1999.
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PRINCIPLES OF LAW
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001).

ANALYSIS
Rejection Based on Nagano
The Examiner rejects claim 1 as lacking novelty over Nagano stating
that the combination of the stationary platform 4 and lever shaft 5 of Nagano
corresponds to the recited threaded nut (Ans. 6). The Appellant argues that
whereas the lever shaft 5 may be considered as the recited threaded nut, "it is
improper to interpret the stationary platform 4 and the lever shaft 5 as the so-
called nut, since the stationary platform 4 and the lever shaft 5 are separate
pieces. Moreover, the lever shaft 5 rotates relative to the stationary platform
4." (App. Br. 12-13, citing Nagano, pg. 4, ll. 8-19; see also Reply Br. 3).
The Appellant argues that one of ordinary skill would consider a nut to be a
single block of metal or similar material, and a nut does not move relative to
its own contact surface (Reply Br. 2-3). According to the Appellant,
because the contact surface in Nagano is not part of the lever shaft 5,
Nagano fails to disclose the contact surface of a nut tangentially contacting
the frame as required (App. Br. 13).
The Examiner argues that the claim does not require a one piece nut
and contact surface (Ans. 10). The Examiner cites a dictionary defining
"nut" as "a perforated block usually of metal that has an internal screw
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thread and is used on a bolt or screw for tightening or holding something."
(Ans. 11). The Examiner asserts that the lever shaft 5 "can reasonably be
considered to include the platform 4, because the shaft fastens the platform
to the frame F." (Ans. 11).
We generally agree with the Appellant. As Nagano makes explicitly
clear, and as the Examiner concedes (Ans. 11), the lever shaft 5 fastens the
stationary platform to the frame (Nagano, pg. 3, ll. 15-17, 25-27; pg. 4, ll.
14-15; pg. 6, ll. 1-3). Thus, it is clear that even under the definition of a
"nut" proffered by the Examiner, the stationary platform 4 is the
"something" that is tightened and held by the lever shaft 5 which
corresponds to the recited nut. In addition to the fact that stationary platform
4 is an entirely separate structure from the lever shaft 5, these components
are not interconnected with one another and further move relative to one
another as argued by the Appellant. In this regard, Nagano states "[a]n
upper surface of the stationary platform (4) serves as a shaft bearing surface
for the lever shaft (5) …." (Nagano, pg. 4, ll. 24-25).
In view of the above, we find the Examiner's construction of the term
"nut" to encompass the stationary platform 4 as well as the lever shaft 5 to
be unreasonably broad and inconsistent with the definition of a nut as
proffered by the Examiner. Correspondingly, we do not sustain the
Examiner's anticipation rejection of claim 1.

Rejection Based on Hitchcock
The Examiner rejects claim 18 as lacking novelty over Hitchcock.
The Appellant argues inter alia that Hitchcock, which discloses a soap dish
with a clamping block, "does not disclose a bicycle component, which is
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positively claimed in claim 18." (App. Br. 16). The Examiner asserts that
"the term 'bicycle component' does not appear to define patentably
distinguishing structure," that the structure Hitchcock is "capable of being
used with a bicycle frame portion," and that the pipe of Hitchcock to which
the soap dish is attached is equivalent to a bicycle frame portion (Ans. 6-7,
15-16).
We agree with the Appellant. Even if the bicycle component
recitation within the preamble is not given patentable weight, "bicycle
component" is also a structural limitation that is positively recited as the first
limitation in the body of claim 18. No such component is disclosed in the
soap dish and pipe disclosed in Hitchcock. See Scripps Clinic, 927 F.2d at
1576. Thus, we do not sustain the Examiner's rejection. The Appellant's
argument regarding the non-deformability of the clamping block of
Hitchcock, while being pertinent to the obviousness rejection in combination
with Dunn discussed infra, is moot with respect to the present anticipation
rejection.

Rejections Based on Seto
The Examiner rejects claim 2-4 and 10-13 as lacking novelty over
Seto which discloses a "double-sided screw band for utility pole" (Seto title,
Figs. 1-2). The pertinent arguments between the Appellant and the
Examiner are substantively the same as discussed supra with respect to the
anticipation rejection based on the soap dish of Hitchcock (see App. Br. 13;
Ans. 7, 12-13). Thus, because Seto does not disclose a bicycle component,
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we do not sustain the Examiner's anticipation rejection of claims 2-4 and 10-
13 based on Seto.
The Appellant also argues that Seto fails to disclose a "portion of the
band tightener being configured to deform in response to contact between
the contact surface and the bicycle frame portion with the band tightened
around the bicycle frame portion" as required by independent claim 2 (App.
Br. 14). This line of argument requires discussion because the Examiner
also rejected claims 14-16 as obvious over Seto in view of the acknowledged
prior art in the '582 patent, these claims depending from independent claim 2
and being directed to particular devices for the recited bicycle component
(i.e., shift control mechanism, lamp and derailleur respectively).
The Examiner states that "it was generally known to use a clamp to
mount bicycle components to a bicycle" (noting column 1, lines 22-36 of the
'582 patent), and reasons that "it would have been obvious to use the clamp
of Seto to mount conventional bicycle components in a conventional
manner" given Seto's disclosure of using the band clamp to attach an object
to a cylindrical body (Ans. 8). As to the recited deformation, the Examiner
argues that the L-shaped metal pieces 6 are threaded nuts that "would
deform, when placed under stress" because "[p]hysically, all materials will
deform if placed under sufficient stress." (Ans. 13-14).
While we do not disagree with the Examiner's reasoning as to the
obviousness of using the clamp of Seto to mount bicycle components, we
disagree with the Examiner's finding that Seto discloses the pertinent
deformation limitation, and agree with the Appellant that the Examiner's
assertion of the metal pieces of Seto deforming is mere conjecture (App. Br.
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14). In particular, we find the Examiner's assertion that the relatively thick
metal pieces of Seto would deform to be puzzling when the band 7 of Seto is
illustrated as being much thinner in construction. In this regard, Seto
specifically states that the band 7 "can be used up to a breakage force
corresponding to the cross section and a sufficient strength can be secured
economically." (Seto, pg. 5, ¶ [3]). Thus, Seto appears to suggest, and it
seems more likely to us, that the band would deform and fail prior to
deformation of the metal pieces 6.
Correspondingly, in our view, the Examiner's factual finding with
respect to the deformation in Seto is unsound, the obviousness rejection fails
to account for the limitation "portion of the band tightener being configured
to deform in response to contact between the contact surface and the bicycle
frame portion with the band tightened around the bicycle frame portion"
required by independent claim 2. Thus, we also do not sustain the
Examiner's obviousness rejection of claims 14-16 that depend from claim 2.

Rejection Based on Dunn
The Examiner alternatively rejected claim 18 as obvious over Dunn in
view of Hitchcock stating that, while the bicycle mounting structure of Dunn
does not include a nut having a deformable projection, such a nut is
disclosed in Hitchcock (Ans. 8-9). Thus, the Examiner concludes that "it
would have been obvious to one of ordinary skill in the clamp art to
associate a deformable projection with the Dunn band tightener in order to
enhance clamping action." (Ans. 9).
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The Appellant argues that there is no evidence that the curved surface
of the clamping block 8 of Dunn (which the Examiner considers to be a nut)
deforms in response to contact with the disclosed pipe 10, that the
Examiner's assertion of deformation is mere conjecture, and that the
clamping block 8 would not deform (App. Br. 19; Reply Br. 5-6). Referring
to the submitted arguments for the anticipation rejection based on Hitchcock,
the Appellant argues that the clamping block is not configured to deform in
view of its size and shape which includes a curved contact surface that
matches the curvature of the pipe, and any deformation would frustrate the
purpose of Hitchcock's invention (App. Br. 16-17, 19; Reply Br. 6). The
Appellant argues that the block is not designed to deform in view of
Hitchcock's teaching "[b]y tightening said bolt the clamping block 8 will be
forced into rigid contact with the pipe 10, due to the engagement of the head
7 of said bolt with the outer face of one of the lugs 4, thus rigidly clamping
the soap dish in position." (App. Br. 16-17, quoting Hitchcock, ll. 59-74,
emphasis added).
We agree with the Appellant. There is no indication that the clamping
block of Hitchcock is configured to deform, or that it actually deforms when
in contact with the pipe. We further find that the Appellant's position is
bolstered by description within Hitchcock which states that "rigid contact" is
made by the clamping block, such characterization being more likely
indicating a non-deforming block than a deforming block. Correspondingly,
in our view, the Examiner's factual finding with respect to the deformation
in Hitchcock is unsound, and the obviousness rejection fails to account for
the limitation requiring the nut to include at least one projection that is
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configured to deform in response to tangential contact between the contact
surface and the bicycle frame portion. Thus, we do not sustain the rejection
of claim 18 based on the combination of Dunn and Hitchcock.

CONCLUSION
The Examiner's rejections of claims 1-4, 10-16 and 18 are
REVERSED.

REVERSED

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