Ex Parte ICHIDA et al

Patent Trial and Appeal Board

Oct 29, 2018

13370517 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/370,517 02/10/2012
22919 7590 10/31/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Tadashi ICHIDA
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.
SN-US110186 9982
EXAMINER
TROOST, AARON L
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T ADAS HI ICHIDA, HIDEKI IKEMOTO, and
TOYOTO SHIRAI
Appeal2017-002277
Application 13/3 70,517
Technology Center 3600
Before MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b). Appellants attended an oral hearing on October 23, 2018.
We REVERSE.
According to Appellants, the "invention relates to a bicycle
suspension control apparatus configured to control a front suspension and a
rear suspension of a bicycle." Spec. ,r 2. Claim 1 is the sole independent
1 According to Appellants, "the real party in interest is Shimano, Inc."
Appeal Br. 3.
Appeal2017-002277
Application 13/370,517
claim on appeal. Below, we reproduce claim 1 as representative of the
appealed claims.
1. A bicycle suspension control apparatus comprising:
a user operating device; and
a controller operatively coupled to the user operating
device to selectively control a front bicycle suspension between
a plurality of operating states and a rear bicycle suspension
between a plurality of operating states, the controller being
configured to selectively change the operating states of both of
the front and rear bicycle suspensions to different ones of the
operating states in response to a single user input, the controller
including
a receiving part configured to connect to an external
device to receive combination information indicating at
least one combination of the operating states from among
combinations of the operating states of the front and rear
bicycle suspensions, the combination information
including at least a combination information configured to
set one of the front bicycle suspension and the rear bicycle
suspension into a locked state for preventing expansion
and contraction and to set another of the front bicycle
suspension and the rear bicycle suspension into a free state
for expanding and contracting;
a storage part that stores the combination
information received by the receiving part; and
a control part that controls the front and rear bicycle
suspensions based on the combination information stored
in the storage part in response to the single user input of
the user operating device.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-9 and 11 under 35 U.S.C. § I03(a) as unpatentable
over Song et al. (US 2009/0192673 Al, pub. July 30, 2009)
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Appeal2017-002277
Application 13/370,517
("Song"), Earle et al. (US 2011/0109060 Al, pub. May 12,
2011) ("Earle), and Galasso et al. (US 2011/0202236 Al, pub.
Aug. 18, 2011) ("Galasso); and
II. Claim 10 under 35 U.S.C. § I03(a) as unpatentable over Song,
Earle, Galasso, and Takebayashi (US 2009/0102628 Al, pub.
Apr. 23, 2009).
ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, in relevant part:
a controller operatively coupled to the user operating
device to selectively control a front bicycle suspension between
a plurality of operating states and a rear bicycle suspension
between a plurality of operating states, the controller being
configured to selectively change the operating states of both of
the front and rear bicycle suspensions to different ones of the
operating states in response to a single user input, the controller
including
a receiving part configured to connect to an
external device to receive combination information
indicating at least one combination of the operating states
from among combinations of the operating states of the
front and rear bicycle suspensions, the combination
information including at least a combination information
configured to set one of the front bicycle suspension and
the rear bicycle suspension into a locked state for
preventing expansion and contraction and to set another
of the front bicycle suspension and the rear bicycle
suspension into a free state for expanding and contracting;
a storage part that stores the combination
information received by the receiving part; and
a control part that controls the front and rear
bicycle suspensions based on the combination information
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Appeal2017-002277
Application 13/370,517
stored in the storage part in response to the single user
input of the user operating device.
Appeal Br., Claims App. (Claim 1) ( emphases added). In the Appeal Brief,
Appellants argue that the Examiner errs in relying on Galasso to disclose a
controller configured to selectively change both front and rear bicycle
suspensions to different ones of the operating states in response to a single
user input, as claimed. See Appeal Br. 10-11. According to the Examiner,
however, "[ w ]hether or not Galasso teaches that shocks may be locked and
unlocked independently with a single user input is moot, as the [E]xaminer
d[ oes] not rely on Galasso for this teaching. [Instead], the [E]xaminer relies
on ... Song." Answer 5 (citing Final Action 3--4, citing Song ,r,r 62, 78-84).
We agree with Appellants, however, that "[n]owhere does Song teach
or even suggest that its different ride modes include different combinations
of operating states of both the front and rear suspensions[,] or that such a
combination can be changed based on a single user input." Reply Br. 5. In
fact, "Song merely teaches a riding mode in which the operating state of the
front suspension may be in a locked state" (J d. ( citations omitted)), and
states that "the descriptions and functionality of ... suspension system 135
would apply equally to ... rear suspension 175" (Song ,r 47 (bold omitted)),
but the Examiner does not demonstrate that Song describes changing
operation of both front and rear suspensions together.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 1. We also do not sustain the Examiner's
obviousness rejection of claims 2-9 and 11 that depend from claim 1.
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Appeal2017-002277
Application 13/370,517
Rejection II
Claim 10 depends from claim 1. The Examiner does not rely on
Takebayashi to remedy the above-discussed deficiency in claim 1 's
rejection. Thus, we do not sustain the Examiner's obviousness rejection of
claim 10.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1-11.
REVERSED
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