Ex Parte Braedt

Patent Trial and Appeal Board

Mar 17, 2015

11689466 (P.T.A.B. Mar. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HENRIK BRAEDT
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Appeal 2013-002706
Application 11/689,466
Technology Center 3600
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Before: JILL D. HILL, THOMAS F. SMEGAL, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Henrik Braedt (Appellant)
1
seeks review under 35 U.S.C. § 134 of the
Examiner’s rejections of claims 1–7, 11, 14–16, 18–20, 22–24, and 26. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a bicycle multi-gear cassette. Claims 1, 4,
and 14 are independent claims. Claim 1, reproduced below, is illustrative of
the claimed subject matter:

1
Applicant indicates that SRAM, LLC is the real party in interest. Appeal
Br. 4.
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Application 11/689,466
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1. A bicycle multi-gear cassette mountable to a wheel hub,
the cassette comprising:
a truncated conical shell having a first opening proximate
a small shell base and a second opening proximate a large shell
base, the openings coaxial with a central axis of the shell, the
first opening proximate the small shell base receiving the wheel
hub;
a plurality of toothed sprockets having different numbers
of teeth disposed on the shell and extending radially of the
central axis;
a torque load transmitting profile configured on the shell
proximate one of the small and large shell bases;
a first radial load transmitting profile configured on the
shell proximate the large shell base transmitting radial load to
the wheel hub;
a cap member extending radially of the shell axis and
non-rotatably coupled to the radial load transmitting profile
proximate the large shell base, the cap member including a third
opening coaxial with the shell axis and proximate the large
shell base, the third opening receiving the wheel hub;
a second radial load transmitting profile configured at the
third opening transmitting radial load to the wheel hub; and
a third radial load transmitting profile configured at the
first opening and transmitting radial load to the wheel hub,
wherein the shell, sprockets, and the first and third load
transmitting profiles are a single-piece construction.

REJECTION
Claims 1–7, 11, 14–16, 18–20, 22–24, and 26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Berecz (US 5,503,600. issued
Apr. 2, 1996).
2
Answer 4.

2
The Examiner withdrew the rejection of claims 1–7, 11, 14–16, 18–20, 22–
24, and 26 under 35 U.S.C. § 102(b) as anticipated by Berecz. Answer 4.
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Application 11/689,466
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ANALYSIS
Appellant argues claims 1–4, 6, 7, 11, 14–16, 18–20, and 26 as a
group. Appeal Br. 9–13. Appellant provides separate arguments for claim
5. Id. at 12–13. We group claims 22–24 with claim 5 in view of their
subject matter. We take claim 1 as being representative of the claims argued
as a group, and claims 2–4, 6, 7, 11, 14–16, 18–20, and 26 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2012). Claims 5 and 22–24 are
separately addressed.

Claim 1
Claim 1 recites, in relevant part, “wherein the shell, sprockets, and the
first and third load transmitting profiles are a single-piece construction.”
Appeal Br. 15, Claims App. The Examiner acknowledges that Berecz fails
to disclose a bicycle multi-gear cassette where the shell, sprockets, and load
transmitting profiles are a single-piece construction as required by claim 1.
Answer 6. The Examiner determines that “it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify the
cassette of Berecz to include the shell and sprockets being made as a single
piece . . . .” Id. The Examiner reasons that “it has been held that forming in
one piece an article which has formerly been formed in two pieces and put
together involves only routine skill in the art.” Id. (citing Howard v. Detroit
Stove Works, 150 U.S. 164 (1893)). The Examiner further reasons that “one
of ordinary skill in the art would have found it obvious to make the shell and
sprockets a single piece in order to reduce the number of parts in order to
allow for a simpler and quicker assembly of the sprocket sub-assembly and
assembly of the bicycle.” Id.
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Appellant argues that the Examiner’s reliance on Howard is
misplaced, as there is no per se obviousness rule that “forming several
pieces integrally as a single-piece structure would have been obvious . . . .”
Appeal Br. 11. Instead, Appellant contends that the obviousness
determination is a “fact intensive inquiry.” Id. Appellant further contends
that “[t]here is no evidence that the single-piece limitation would have been
obvious in view of Berecz.” Id.
We agree with Appellant that Howard does not establish a per se
obviousness rule that integrally-combining multiple pieces to make a single-
piece construction is obvious. Instead, obviousness is determined by an
objective evaluation of the factors presented in Graham v. John Deere Co.
383 U.S. 1 (1966); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
(2007) (confirming that the Graham factors still controls the obviousness
analysis).
Here, as the Examiner finds, the difference between the prior art and
the scope of claim 1 is that Berecz discloses a bicycle multi-gear cassette
where the shell, sprockets, and load transmitting profiles are a multi-piece
construction, rather than a single-piece construction as recited in claim 1.
See Answer 6. The Examiner concludes that it would have been within the
level of ordinary skill at the time of the invention of claim 1 to modify
Berecz’s familiar bicycle multi-gear cassette with the predictable variation
of forming the cassette as a single-piece construction. See id.; KSR Int’l Co.,
550 U.S. at 417 (“If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”).
We recognize that “[r]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness.” KSR Int’l Co., 550 U.S. at 418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner
reasons that “one of ordinary skill in the art would have found it obvious to
make the shell and sprockets a single piece in order to reduce the number of
parts in order to allow for a simpler and quicker assembly of the sprocket
sub-assembly and assembly of the bicycle.” Answer 6; see also Answer 8.
Accordingly, the Examiner has not applied a per se rule of obviousness in
concluding that Berecz renders claim 1 obvious.
Appellant further argues that Berecz teaches away from the invention
of claim 1. Appeal Br. 12. Specifically, Appellant argues that “Berecz
teaches away from a single-piece construction because the main purpose of
Berecz is to supply a gear subassembly that can be field stripped.” Id.
Appellant states that “Berecz proposes a gear assembly that is easy to take
apart and replace parts thereof, and in particular provides structure that
enables easy replacement of one or more of the gears (sprockets).” Id. at 9.
We find this argument unpersuasive. “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference, . . .
would be led in a direction divergent from the path that was taken by the
applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting
Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir.
1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(holding that, to teach away, the prior art must “criticize, discredit, or
otherwise discourage the solution claimed.”). As the Examiner correctly
finds, Berecz does not specifically disclose that a single-piece structure is
precluded or undesirable.” Answer 8; cf. Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321, 1328 (Fed. Cir. 1998) (“There is nothing in the Borla Device
to suggest to one of skill in the art that a similar device under radial
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compression with a pre-slit septum was unlikely to work.”). The Examiner
further finds that a benefit attributable to Berecz’s multi-gear cassette—rapid
and easy repair of the cassette—“would be achieved even if [Berecz’s] arms
were a single piece with the sprockets.” Answer 8–9. The Examiner also
finds that other purported benefits of Berecz’s multi-gear cassette would also
be maintained with a single-piece construction. See id. at 9.
In reply, Appellant argues that Berecz’s failure to expressly disclose
the undesirability of a single-piece construction does not “amount[] to a
suggestion to combine separate parts.” Reply Br. 2. This argument is
unavailing, as the law does not require that, unless a reference suggests a
modification, the reference teaches away from the modification.
3
See In re
Fulton, 391 F.3d at 1201.
Appellant emphasizes that “Berecz explicitly states that it is the
central benefit of the invention to not attach the gears at all, even with any
fasteners.” Reply Br. 2 (citing to Berecz, col. 1, ll. 55–57). Appellant’s
contention misreads Berecz. Column 1, lines 55–57 merely states that the
“mechanical interlock between the arms and the gears is devoid of fasteners
thereby facilitating rapid field repair.” This disclosure does not indicate that,
if the arms and gears were a single piece, this integral construction would
not also facilitate rapid field repair. See, e.g., Answer 8–9 (finding that a
single-piece construction would allow for easy repair, even during a race).
Appellant criticizes the Examiner’s reasoning that one of ordinary
skill in the art would have found it obvious to make the shell and sprockets a

3
To the extent that Appellant is arguing that, to be obvious, the prior art
needs to suggest the modification, such an argument is foreclosed by KSR, in
which the Supreme Court rejected the rigid requirement of a teaching,
suggestion, or motivation to combine known elements in order to show
obviousness. KSR Int’l Co., 550 U.S. at 415.
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single piece in order to reduce the number of parts in order to allow for a
simpler and quicker assembly of the sprocket sub-assembly and assembly of
the bicycle as being “only derivable from the instant application itself and
with the use of impermissible hindsight.” Reply Br. 3. However, Appellant
fails to provide any basis for this conclusory assertion.
For the reasons above, we sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Berecz. Further, claims
2–4, 6, 7, 11, 14–16, 18–20, and 26 fall with claim 1.

Claims 5 and 22
Claim 5 depends from claim 1 and further recites, “wherein the
truncated conical shell comprises: a plurality of coaxial annular cylinders of
variable diameter extending along an axis; a plurality of coaxial annular
discs of variable diameter extending radially of the axis; and the cylinders
and discs alternatingly arranged in a stepped sequence.” Appeal Br. 16–17,
Claims App. Claim 22, which depends from claim 18, recites the same
additional subject matter. Id. at 19. The Examiner finds that Berecz’s
Figure 3 discloses the recited structure. Answer 7. Specifically, the
Examiner finds that the sprocket elements of Berecz provide the recited
structure, because, as modified, the sprockets and arms form a single-piece
construction.
Appellant argues that the Examiner’s finding is improper, as claim 5
requires the conical shell as recited and sprockets disposed on the shell.
Appeal Br. 12–13. We find this argument persuasive. Even if the Examiner
parses Berecz’s sprockets to represent both the claimed plurality of toothed
sprockets and coaxial annular discs, the Examiner fails to identify what
structure constitutes the recited plurality of coaxial annular cylinders of
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variable diameter. Per the Examiner’s modification of Berecz, the three
arms are integrated with the sprockets to form a single-construction.
However, these three arms do not form a cylinder in between each sprocket.
Instead, the arms would be three solid portions positioned 120 degrees apart
along an otherwise empty cylindrical volume. Such a structure does not
constitute a plurality of coaxial annular cylinders of variable diameter as
required by claims 5 and 22.
For the reasons above, we do not sustain the Examiner’s rejection of
claims 5 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Berecz.
Further, we do not sustain the rejection of claims 23 and 24, which depend
from claim 22.

DECISION
For the above reasons, we AFFIRM the Examiner’s rejection of
claims 1–4, 6, 7, 11, 14–16, 18–20, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Berecz.
For the above reasons, we REVERSE the Examiner’s rejection of
claims 5 and 22–24 under 35 U.S.C. § 103(a) as being unpatentable over
Berecz.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART
JRG