Ex Parte Emura et al

Patent Trial and Appeal Board

Jun 30, 2017

13109144 (P.T.A.B. Jun. 30, 2017)

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.
13/109,144 05/17/2011 Atsuhiro EMURA SN-US115115 1846
22919 7590 07/05/2017
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
RIEGELMAN, MICHAEL A
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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 ATSUHIRO EMURA, KAZUYA KUWAYAMA, and
KENKICHIINOUE
Appeal 2015-002800
Application 13/109,144
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Atsuhiro Emura et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—3 and 10.2 Appeal Br. 2, 5.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral
hearing was held on May 16, 2017.
We REVERSE.
1 According to Appellants, the real party in interest is Shimano, Inc.
Appeal Br. 3.
2 See footnote 3, infra.
Appeal 2015-002800
Application 13/109,144
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “generally relates to a bicycle front
derailleur,” and more specifically “relates to a bicycle front derailleur in
which a width of a chain receiving slot can be adjusted.” Spec. 11.
Claim 1, reproduced below with emphasis added, is representative of the
subject matter on appeal.
1. A bicycle front derailleur comprising:
a base member including a bicycle mounting portion; and
a chain guide movably supported to the base member
between a retracted position and an extended position relative
to the base member, the chain guide including a first guide
plate having a first inner surface arranged to move and
laterally shift a bicycle chain in a first direction and a second
guide plate having a second inner surface arranged to move
and laterally shift the bicycle chain in a second direction that is
opposite the first direction, the first and second inner surfaces
facing each other to form opposite lateral sides of a chain
receiving slot therebetween,
the second guide plate including an adjustable guide
member arranged at the chain receiving slot to move between at
least two different positions relative to the second guide plate.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kojima US 5,624,336 Apr. 29, 1997
2
Appeal 2015-002800
Application 13/109,144
REJECTION
The following rejection is before us for review:3 Claims 1—3 and 10
stand rejected under 35 U.S.C. § 102(b) as anticipated by Kojima. Final
Act. 2^4.
ANALYSIS
Independent claim 1, the only rejected independent claim before us
for review,4 recites, in relevant part, a bicycle front derailleur that includes
“a chain guide” with “a first guide plate having a first inner surface arranged
to move and laterally shift a bicycle chain in a first direction and a second
guide plate having a second inner surface arranged to move and laterally
shift the bicycle chain in a second direction,” with “the first and second
3 We note that claims 1—16 are presently pending, with claims 1—3 and
10 being subject to the rejection before us for review, claims 5—9 and 11—16
standing allowed by the Examiner, and claim 4 standing objected to by the
Examiner as being dependent upon a rejected base claim, but indicated as
being allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims. See Final Act. 1
(Office Action Summary), 5 (discussing allowable and objected to claims);
Latest Advisory Action (dated August 28, 2014) (entering proposed
amendments and providing the most recent status of claims 1—16). We also
note that proposed new claims 17 and 18 were expressly not entered by the
Examiner in an Earlier Advisory Action (dated June 5, 2014), but are not
mentioned, or given a status, in the Latest Advisory Action. We leave it to
the Examiner to determine whether to enter proposed new claims 17 and 18
into the record, should there be further prosecution of this application;
regardless, it is clear from the record that proposed new claims 17 and 18 are
not subject to a rejection, and are not before us for review as part of the
instant appeal.
4 See footnote 3, supra.
3
Appeal 2015-002800
Application 13/109,144
inner surfaces facing each other to form opposite lateral sides of a chain
receiving slot therebetween.” Appeal Br., Claims App. (emphasis added).
In rejecting this claim, the Examiner relies on swinging link 20 of
Kojima as being the claimed second guide plate. Final Act. 3^4. Appellants
persuasively assert, however, that no part of Kojima’s swinging link 20 is
“arranged to move and laterally shift the bicycle chain,” as recited in the
claim. See Appeal Br. 9—11; Reply Br. 5—6. The Examiner notes that the
claim does not necessarily require “direct contact” between the second guide
plate and the chain, and takes the position that “one can say that [Kojima’s]
component 20 moves and laterally shifts the chain,” apparently because
swinging link 20 and inner chain switching guide 4 (which does contact and
shift the chain) are parts of a common mechanism. Ans. 2—3 (explaining
that, in Kojima, “[ejven though the chain contacts surface 41b of 4,
component 4 is attached to 20 at 41a”). But, the Examiner does not identify
any part of Kojima’s swinging link 20 that would actually “move and
laterally shift” the chain, whether directly or indirectly. See id.
Although we appreciate the Examiner’s observation that the claim
does not recite “direct contact”; nevertheless, the claim here does require
more than just a second guide plate (swinging link 20) being part of a
mechanism that contacts the chain. In particular, the plain language of the
claim requires that such second guide plate (swinging link 20) be “arranged
to move and laterally shift the bicycle chain.” Appeal Br., Claims App.
(emphasis added).
Upon review of the evidence before us, we agree with Appellants that
“[t]he swinging link 20 of Kojima is not arranged to move and laterally shift
the chain 9, as alleged by the Examiner, merely by being connected to the
4
Appeal 2015-002800
Application 13/109,144
inner chain switching guide 4.” Reply Br. 5; see also id. (noting that “the
swinging link 20 of Kojima is not arranged to move and laterally shift the
bicycle chain 9, as recited in Appellant’s independent claim 1, but merely
swings as a result of the movement of inner chain switching guide 4)
(emphasis omitted). In short, we agree with Appellants that the Examiner’s
reliance on Kojima’s swinging link 20 as being the second guide plate,
arranged as recited in the claim, is not supported by a preponderance of the
evidence. See Appeal Br. 9—11; Reply Br. 5—6.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding of each and every limitation as set forth in the
claims in a single reference—we do not sustain the rejection of claims 1—3
and 10 under 35 U.S.C. § 102(b) as anticipated by Kojima.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—3 and 10
under 35 U.S.C. § 102(b) as anticipated by Kojima.
REVERSED
5