Ex Parte Hunt et al

Board of Patent Appeals and Interferences

Sep 4, 2012

10707019 (B.P.A.I. Sep. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW HUNT, BERND KRETSCHMER, and
KEVIN NESLING
____________________

Appeal 2010-005525
Application 10/707,019
Technology Center 3600
____________________

Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
61, 11-21, 23 and 26. App. Br. 2, 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The claims are directed to a suspension adjustment actuator apparatus.
Claim 16, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
16. A suspension adjustment actuator apparatus for use in
adjusting a suspension of a handlebar-steered vehicle, the
apparatus comprising:
a body attachable to a handlebar of the handlebar-
steered vehicle;
an actuator assembly including a lever arm in
pivoting engagement with the body about a pivot axis, the
lever arm associated with a suspension adjust cable, the
actuator assembly having a first position corresponding to
a first suspension setting and a second position
corresponding to a second suspension setting; and
an actuator control assembly including an
adjustment assembly associated with each of the body and
the actuator assembly, the adjustment assembly configured
to position the actuator assembly relative to the body in
the second position corresponding to the second
suspension setting, wherein the second position and
corresponding second suspension setting are adjustable
within a range of alternative second suspension positions
and corresponding second suspension settings through the
adjustment assembly independently of the first suspension
setting,
the actuator control assembly configured to
facilitate the repeated switching of the actuator assembly

1 Claims 3-6 are not mentioned in the Answer. The status of claims 3-6 is
unclear.
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directly between the first position and any one of the
alternative second positions and corresponding second
suspension settings.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Girvin
Kuo
US 6,382,370 B1
US 6,767,024 B1
May 7, 2002
Jul. 27, 2004

REJECTIONS
Claims 16-21 and 23 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kuo. Ans. 5.
Claims 1, 2, 11-15 and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuo in view of Girvin. Ans. 7.
OPINION
Appellants argue the rejection of independent claims 1 and 16 based
solely on Kuo allegedly lacking an “adjustment assembly configured to
position the actuator assembly relative to the body in the second position” as
required by each of these claims. App. Br. 4-5. Appellants do not raise any
issues regarding the Examiner’s application of Girvin. The remaining claims
are argued solely based upon dependency. App. Br. 5.
The Examiner interprets Kuo’s second collar 20 with groove 21 as the
recited “adjustment assembly,” Kuo’s lever 22 with groove 21 as the
“actuator assembly,” and Kuo’s ring 30 as the claimed “body.” Ans. 5-8.
The Examiner interprets Kuo’s lockout position, depicted in Figure 4B, as
the claimed “first position.” The claimed “second position” must correspond
to a second suspension setting and “the second position and corresponding
second suspension setting are adjustable within a range of alternative second
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suspension positions and corresponding second suspension settings.” The
Examiner interprets any of the positions Kuo’s collar might assume when
moving between the position depicted in Figure 4A and the position depicted
in Figure 4 as such a “second position.” Ans. 8.
Initially, Appellants and the Examiner assert that the other has
mischaracterized Kuo. App. Br. 4; Ans. 11. Appellants and the Examiner
debate how Kuo’s lever 22 returns from the position depicted in Figure 4B
to the position depicted in Figure 4. Appellants contend it does so solely
under the influence of the torsional biasing spring 612 acting on cap 62,
which, in turn pulls cable B and lever 22 in the counterclockwise direction
as viewed in Figure 4A. The Examiner contends Kuo’s statement “[w]hen
rotating the lever 22 . . . back to its operative position . . .” indicates that
rotation of the lever by the user is required to reposition the lever in any of
the positions between that of Figure 4A and Figure 4. Ans. 11 (citing Kuo
col. 3, ll. 40-43). Thus, in the Examiner’s view torsional spring 612
essentially acts only to take up the slack in cable B by turning cap 62 once
the lever has been rotated away from the lockout position, but not to actually
pull the cable with enough force to cause such rotation.
The fact that Kuo uses the phrase “when rotating the lever 22 the
wings of the engaging member 23 are slid in the grooves 113” as opposed
to, for example, “when releasing the lever the wings slide” provides some
support for the Examiner’s position. However, Kuo’s language “when
rotating . . .” does not make it entirely clear if the user must exert a force
over the entire range of motion from the Figure 4B position to the Figure 4A
position or if rotating is effectuated simply by releasing the lever from the
Figure 4B locked position. The presence of spring plate 231 is also not
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dispositive since this plate could simply provide additional, as opposed to
the sole, resistance against lever movement. Contra App. Br. 5. The critical
piece of information needed to determine how Kuo’s unlocking rotation is
effectuated is whether torsional spring 612 exerts enough force to overcome
the resistive forces tending to prevent rotation of the lever towards the
position depicted in Figure 4. Such resistive forces include, most notably for
example, the frictional force generated when moving or attempting to move
engaging member 23 within grooves 113. While there is a significant
likelihood that the Examiner’s characterization of the movement of Kuo’s
lever is accurate, Kuo does not provide enough information to demonstrate
this is necessarily the case. Regardless, this is not the decisive issue in this
appeal.
Even presuming Appellants’ characterization of the movement of
Kuo’s lever as discussed above is accurate, we still agree with the
Examiner’s conclusion that Kuo’s collar “is clearly capable of being
positioned within a range of alternative second suspension settings, for
example, corresponding to any lever position between reference character 11
and 13.” Ans. 11. Appellants contend that since lever 22 returns to the
Figure 4 position under the influence of torsional spring 612, lever 22 is
always in motion over the range identified by the arrow in Figure 4A. App.
Br. 4. Thus, Appellants conclude lever 22 “cannot be positioned” within
that range. App. Br. 5 (emphasis in original).
The claims involved in this appeal are directed to apparatuses. “It is
well settled that patentability of apparatus claims must depend upon
structural limitations . . . .” In re Michlin, 256 F.2d 317, 320 (C.C.P.A.
1958). 35 U.S.C. § 112, sixth paragraph, provides that an element of a
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combination may be expressed as a means for performing a specified
function and “such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof.” However, where, as here, 35 U.S.C. § 112, sixth paragraph, is not
invoked, defining a structure in terms of its function, may result in claims
that are not limited to the structures described in the specification and
equivalents thereof, such that the claims are sufficiently broad so as to
include other structures capable of performing the recited function. See e.g.,
In re Michlin, 256 F.2d at 320; see also e.g., In re Spitzglass, 96 F. 2d 1002,
1005 (C.C.P.A. 1938)(construing functional limitations in such a manner
prior to the enactment of what is now 35 U.S.C. § 112, sixth paragraph); see
also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (defining an
element functionally, i.e., by what is does, carries with it a risk). We are
mindful of the fact that in certain situations, the recitation of a particular
function may imply the presence of a specific structure. See, e.g., Rowe v.
Dror, 112 F. 3d 473 (Fed. Cir. 1997).
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We agree with the
Examiner that when given its broadest reasonable interpretation, the phrase
in question “an adjustment assembly configured to position the actuator
assembly relative to the body in the second position” encompasses any
adjustment assembly capable of so positioning the actuator assembly. See
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e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F. 3d 1335, 1349
(Fed. Cir. 2012). Appellants have not apprised us of any reason “configured
to” should be construed more narrowly. Appellants chose to define how the
adjustment assembly is configured by what it does. It would be improper for
us to impose specific structural requirements on the claimed adjustment
assembly that have no express basis in the claim. See In re Prater, 415 F.2d
1393, 1404-05 (CCPA 1969); SuperGuide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004).
Thus, a determination of whether Kuo’s lever actually assumes a
position within the range denoted by the arrow in Figure 4A is not critical to
determining whether Kuo anticipates claims 1 and 16. The critical question
is whether Kuo’s collar is capable of, and thus “configured to” position
Kuo’s lever in that manner. We agree with the Examiner that it is. First,
Appellants have not apprised us of any reason “configured to position”
should be interpreted to require the ability to stop in the second position.
Second, even if such stopping were required, there is nothing in the claim
precluding the use of a user-generated force (i.e., overcoming the alleged
bias of torsional spring 612) to do so. Appellants do not dispute the fact that
such positioning corresponds to a suspension setting. Thus, Kuo’s collar is
reasonably interpreted as configured to position lever 22 relative to ring 30
in a second position corresponding to a second suspension setting.
Accordingly, we agree with the Examiner that broadly defining the
configuration of the adjustment assembly in terms of the function it performs
as opposed to the structure used to do so (See, e.g., Spec. paras. [0033]-
[0034]) does not patentably distinguish the claimed invention from Kuo.
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DECISION
The Examiner’s rejections of claims 1, 2, 11-21, 23 and 26 are
affirmed.
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)(1)(iv).

AFFIRMED

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