Ex Parte Kamada

Patent Trial and Appeal Board

Sep 21, 2017

12954962 (P.T.A.B. Sep. 21, 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.
12/954,962 11/29/2010 Kenji KAMADA SN-US105268 6567
22919 7590 09/25/2017
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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 KENJI KAMADA
Appeal 2016-007357
Application 12/954,962
Technology Center 3600
Before ERIC S. FRAHM, CATHERINE SHIANG, and ALEX S. YAP,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007357
Application 12/954,962
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4—20, and 23. Claim 3 has been withdrawn. Claims 21 and 22
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Disclosed Invention
Appellant discloses a bicycle pedal and bicycle pedal system for
mating a shoe and cleat to a pedal and pivot structure that helps prevent
forward and rearward longitudinal movement and lateral movement of the
cleat (Fig. 1; Spec. 11; Abs.).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1,14, and 23, which are reproduced below with emphases
added:
1. A bicycle pedal comprising:
a pedal spindle;
a pedal body rotatably mounted on the pedal spindle
about a center pedal spindle axis of the pedal spindle;
a first cleat engagement member disposed on the pedal
body at a first location;
a second cleat engagement member disposed on the pedal
body at a second location that is spaced from the first location,
at least one of the first and second cleat engagement
members being pivotally mounted relative to the pedal body
about a pivot axis that is parallel to the center pedal spindle axis
between a release position and an engagement position; and
a pivot structure disposed on the pedal body at a third
location that is disposed between the first and second locations
of the first and second cleat engagement members, the pivot
structure extending upwardly from a surface of the pedal body,
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a pivot axis of the pivot structure about which a received cleat
is configured to be pivotable being substantially perpendicular
to the pivot axis of the at least one of the first and second cleat
engagement members, the pivot axis of the pivot structure
intersecting the center pedal spindle axis, an upper surface of
the pivot structure being disposed below a first cleat retention
surface of the first cleat engagement member or a second cleat
retention surface of the second cleat engagement member, and
the pivot structure being configured to substantially
prevent forward and rearward longitudinal movement and
lateral movement of the cleat.
14. A bicycle pedal system comprising:
a cleat including
a first engagement end;
a second engagement end spaced from the first
engagement end, and
a middle portion disposed between the first and second
engagement ends, the middle portion includes a first pivot
structure; and
a pedal including
a pedal spindle,
a pedal body rotatably mounted on the pedal
spindle about a center pedal spindle axis of the pedal
spindle,
a first cleat engagement member disposed on the
pedal body at a first location,
a second cleat engagement member disposed on
the pedal body at a second location that is spaced from
the first location,
at least one of the first and second cleat
engagement members being pivotally mounted relative to
the pedal body about a pivot axis that is parallel to
a center pedal spindle axis between a release position and
an engagement position, and
a second pivot structure disposed on the pedal
body at a third location that is disposed between the first
and second locations of the first and second cleat
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engagement members, the second pivot structure
extending upwardly from a surface of the pedal body and
being configured to mate with the first pivot structure of
the cleat, a pivot axis of the second pivot structure about
which the cleat is configured to be pivotable being
substantially perpendicular to the pivot axis of the at least
one of the first and second cleat engagement members,
an upper surface of the second pivot structure being
disposed below a first cleat retention surface of the first
cleat engagement member or a second cleat retention
surface of the second cleat engagement member, and the
pivot structure being configured to substantially prevent
forward and rearward longitudinal movement and lateral
movement of the cleat.
23. A bicycle pedal comprising:
a pedal spindle;
a pedal body rotatably mounted on the pedal spindle
about a center pedal spindle axis of the pedal spindle,
a first cleat engagement member disposed on the pedal
body at a first location;
a second cleat engagement member disposed on the
pedal body at a second location that is spaced from the first
location,
at least one of the first and second cleat engagement
members being pivotally mounted relative to the pedal body
about a pivot axis that is parallel to the center pedal spindle axis
between a release position and an engagement position; and
a pivot structure disposed on the pedal body at a third
location that is disposed between the first and second locations
of the first and second cleat engagement members, the pivot
structure extending upwardly from a surface of the pedal body
and an upper surface of the pivot structure being disposed
below a cleat retention surface of one of the first and second
cleat engagement members, a pivot axis of the pivot structure
about which a cleat is configured to be pivotable being
substantially perpendicular to the pivot axis of the at least one
of the first and second cleat engagement members, the pivot
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Application 12/954,962
axis of the pivot structure intersecting the center pedal spindle
axis, the pivot structure having a half hemisphere shape and
being configured to substantially prevent forward and rearward
longitudinal movement and lateral movement of the cleat.
The Examiner’s Rejections
(1) The Examiner rejected claims 6 and 14—18 as being anticipated
under 35 U.S.C. § 102(b) by Desvages (EP 0360245 A2; published Mar. 28,
1990) (hereinafter, “Desvages ‘245”). Final Act. 2-4; Ans. 2—5.
(2) The Examiner rejected claims 1, 2, 4, 5, and 7—20 as being
unpatentable under 35 U.S.C. § 103(a) over Muraoka (US 7,322,260 B2;
issued Jan. 29, 2008) and Winkie (US 4,735,107; issued Apr. 5, 1988).1
Final Act. 4—12; Ans. 6—11.
(3) The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Muraoka, Winkie, and Desvages (DE 3832067 Al;
published Mar. 22, 1990) (hereinafter, “Desvages ‘067”). Final Act. 12—13;
Ans. 11-12.
(4) The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Muraoka, Winkie, and Bryce (US 6,299,192 Bl; issued
Oct. 9, 2001). Final Act. 13—16; Ans. 12.
Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (App. Br. 9—19)
and the Reply Brief (Reply Br. 3—6), the following issues are presented on
appeal:
(1) Did the Examiner err in rejecting claims 6 and 14—18 under 35
U.S.C. § 102(b) because Desvages ‘245 fails to disclose the disputed
1 Claims 2, 4, 5, 7—13, and 15—20 are not separately argued.
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limitation of a pivot structure “configured to substantially prevent forward
and rearward longitudinal movement and lateral movement of the cleat,” as
recited in representative claim 14?
(2) Did the Examiner err in rejecting claims 1, 2, 4—20, and 23 under
35 U.S.C. § 103(a) because the base combination of Muraoka and Winkie
taken alone or with the various tertiary references fails to teach or suggest
the bicycle pedal and bicycle pedal systems recited in claims 1, 14, and 23?
ANALYSIS
Anticipation Rejection of Claims 6 and 14—18
Appellants present arguments as to independent claim 14 (App. Br.
10-11), and rely on those arguments for the patentability of claims 6 and
15—18, which each depend from claim 14 (App. Br. 12). We select claim 14
as representative of the group of claims rejected as being anticipated by
Desvages ‘245.
We agree with the Examiner’s findings and ultimate determination
(Final Act. 2-4; Ans. 2—5) that Desvages ‘245 discloses a bicycle pedal
system having a cleat, pedal, pedal spindle and body, cleat engagement
members, and a pivot structure “configured to substantially prevent forward
and rearward movement longitudinal movement and lateral movement of the
cleat,” as recited in representative claim 14.
Arguments not made in the parties opening briefs are ordinarily
deemed waived. SeeAventis Pharma, S.A. v. Hospira, Inc., 675 F.3d 1324,
1332—33 (Fed. Cir. 2012); see also Optivus Tech., Inc. v. Ion Beam Appl’ns.
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an
appellant in its opening brief... is waived.”) (Citations and quotation marks
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omitted). An appeal “does not, unto itself, entitle an appellant to de novo
review of all aspects of a rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (citations omitted). Rather, an appealed
rejection is reviewed for error identified by the appellant. See also, In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections [.]” (Citing Dye)).
As to representative independent claim 14, Appellant argues (App. Br.
9—11) that Desvages ‘245 fails to disclose, and it is not inherent, that shoe
(S) or adapter plate (3) is substantially prevented from forward and rearward
longitudinal and lateral movement as recited in claim 14. In other words,
Appellant only disputes the “configured to . . .” clause recited at the end of
claim 14. These arguments are not persuasive because, under the broadest
reasonable interpretation, the “configured to . . .” clause reads on the bicycle
pedal system shown and described by Desvages ‘245. Even if Desvages
‘245’s bicycle pedal system allows more movement than that allowed by
Appellant’s invention, the use of the term “substantially” is broad enough to
encompass both the system of Desvages ‘245 as well as Appellant’s system.
In other words, the term “substantially” does not positively recite any
specific amount of movement or lack thereof (e.g., if the claim recited that
only a finite amount of movement is allowed, such as two inches or some
other value). One of ordinary skill in the art at the time of Appellant’s
invention recited in claim 14 would have understood that the bicycle pedal
system shown and described in Desvages ‘245 operates to prevent forward
and rearward longitudinal and lateral movement of the mated shoe S. See
Fig. 1: cleat engagement members la and 4 that mate with engagement ends
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3a and 3b, and pivot structure 16, which all cooperate to prevent movement
of shoe S and cleat 3 in relation to pedal 1.
In view of the foregoing, Appellant has not shown the Examiner’s
rejection of representative claim 14 to be in error, and we sustain the
Examiner’s anticipation rejection of representative claim 14, as well as
claims 6 and 15—18 grouped therewith, in view of the disclosure of Desvages
‘245.
Obviousness Rejections of Claims 1, 2, 4—20, and 23
We have reviewed the Examiner’s rejections (Final Act. 4—16 all over
the same base combination of Muraoka and Winkie) in light of Appellant’s
contentions in the Appeal Brief (App. Br. 13—19) and the Reply Brief (Reply
Br. 4—5) that the Examiner has erred, as well as the Examiner’s response to
Appellant’s arguments (Ans. 6—12). We agree with the Examiner as to the
teachings and suggestions of Muraoka and Winkie (Final Act. 5—9), and we
also agree with the Examiner’s response to Appellant’s arguments that
Appellant argues the references individually (Ans. 7—8).
Independent Claims 1 and 14
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
In this light, Appellant’s arguments as to independent claims 1 and 14 (App.
Br. 13—16) concerning the individual shortcomings in the teachings of
Muraoka and Winkie are not persuasive, and are not convincing of the non-
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obviousness of the claimed invention set forth in independent claims 1 and
14.
The Examiner has relied upon the combination of Muraoka and
Winkie as teaching or suggesting the bicycle pedal system having a pivot
structure for preventing movement as cited in claims 1 and 14. We agree
with the Examiner’s findings in the Answer:
(1) “Winkie discloses the pivot axis is disposed through the pivot
structure in the same was as disclosed by the instant application” (Ans. 6);
(2) Muraoka “discloses (see fig. 5; column 8, lines 49—52) the pivot
structure (23b) is disposed below the second cleat retention surface (70)”
(Ans. 7—8);
(3) the Examiner finds that:
a person of ordinary skill in the art of bicycle pedals would
have the capability of understanding the scientific and
engineering principles, and creativity needed to modify
Muraoka with the pin of Winkie such that the combination of
Muraoka and Winkie discloses the upper surface of the pivot
structure is below the second cleat retention surface of the
second cleat engagement member because Muraoka already
discloses that the upper surface of the pivot structure is below
the second cleat retention surface of the second cleat
engagement member
(Ans. 9); and
(4) “the resulting combination of Muraoka in view Winkie discloses
an identical, or substantially identical, device in comparison to the device
claimed and is thus inherently capable of the claimed functions in the same
way as disclosed in the instant application.” Ans. 10.
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Notably, Appellant does not refute the Examiner’s finding that
Muraoka “discloses (see fig. 5; column 8, lines 49—52) the pivot structure
(23b) is disposed below the second cleat retention surface (70)” (Ans. 7—8)
with evidence or argument in the Reply Brief.
Based on the foregoing, Appellant’s contentions are not persuasive of
Examiner error with regard to claims 1 and 14, and we sustain the
Examiner’s obviousness rejection of independent claims 1 and 14, as well as
claims 2, 4, 5, 7—13, and 15—20 depending respectively therefrom.
Obviousness Rejection of Claim 6
With regard to dependent claim 6, we agree with the Examiner’s
findings and conclusion of obviousness found at pages 12—13 of the Final
Rejection, and specifically that Desvages ‘067 (Fig. 1) teaches “the third
location of the pivot structure (16) [that is located] between the second cleat
engagement member (4) and a longitudinal midpoint (defined by vertical
axis intersecting rotational axis of 2) between the first and second cleat
engagement members (fig. 1)” (Ans. 13).
Appellant’s arguments as to dependent claim 6 (App. Br. 16—17)
concerning the individual shortcomings in the teachings of Desvages ‘067
are not persuasive, and are not convincing of the non-obviousness of the
claimed invention set forth in dependent claim 6, because the rejection is
based on the combination of Muraoka, Winkie, and Desvages ‘067. See
Merck & Co., 800 F.2d at 1097. As with claims 1 and 14 discussed above,
we agree with the Examiner (Ans. 11—12) that Appellant’s arguments
attacking Desvages ‘067 individually is not persuasive.
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Based on the foregoing, Appellant’s contentions are not persuasive of
Examiner error with regard to claim 6, and we sustain the Examiner’s
obviousness rejection of dependent claim 6.
Obviousness Rejection of Claim 23
With regard to independent claim 23, we agree with the Examiner’s
findings and conclusion of obviousness found at pages 13—16 of the Final
Rejection, and specifically that Bryce (Figs. 1 and 13; col. 4,1. 47) teaches a
pivot structure in a half hemisphere shape as recited (see Ans. 15).
Appellant’s arguments as to independent claim 23 (App. Br. 18)
concerning the individual shortcomings in the teachings of Bryce are not
persuasive, and are not convincing of the non-obviousness of the claimed
invention set forth in independent claim 23, because the rejection is based on
the combination of Muraoka, Winkie, and Bryce. See Merck & Co., 800
F.2d at 1097. As with claims 1, 6, and 14 discussed above, we agree with
the Examiner (Ans. 12) that Appellant’s argument attacking Bryce
individually is not persuasive.
Based on the foregoing, Appellant’s contentions are not persuasive of
Examiner error with regard to claim 23, and we sustain the Examiner’s
obviousness rejection of independent claim 23.
CONCLUSIONS
(1) Appellant has not adequately demonstrated that the Examiner
erred in rejecting claims 6 and 14—18 under 35 U.S.C. § 102(b) as
anticipated by Desvages ‘245.
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(2) Appellant has not adequately demonstrated that the Examiner
erred in rejecting claims 1, 2, 4—20, and 23 as being unpatentable under 35
U.S.C. § 103(a) over the base combination of Muraoka and Winkie alone or
in combination with various tertiary references are affirmed.
DECISION
We affirm the Examiner’s (i) anticipation rejection of claims 6 and
14—18; and (ii) obviousness rejections of claims 1, 2, 4—20, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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