10711702 - (R) (P.T.A.B. Mar. 11, 2013)

Ex Parte Kawakami

Patent Trials and Appeals BoardMar 11, 2013

10711702 - (R) (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TATSUYA KAWAKAMI ____________ Appeal 2010-006418 Application 10/711,702 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. Appeal 2010-006418 Application 10/711,702 2 DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Tatsuya Kawakami (Appellant) has filed a Request for Rehearing (Reh. Req.) of the Board’s Decision mailed February 1, 2013, in which we, inter alia, affirmed the Examiner’s rejection of claims 1-8 and 11-21 under 35 U.S.C. § 103(a) as unpatentable over Shahana ’158 (EP 1,134,158 A2, pub. Sep. 19, 2001). We have jurisdiction under 35 U.S.C. § 6(b). Appellant directs our attention to page 13 of the Appeal Brief and argues that we overlooked Appellant’s arguments on that page separately arguing the patentability of dependent claims 4, 5, 7, 18 and 20. Upon consideration of the Request for Rehearing, we modify our original Decision to consider the separate arguments set forth on page 13 of the Appeal Brief regarding claims 4, 5, 7, 18 and 20. Claims 4, 5 and 18 Claim 4 depends from claim 1 and additionally recites that “the pivot axis (P) is substantially perpendicular to the handlebar mounting axis (HB).” Claim 5 depends from claim 1 and additionally recites that “the pivot axis (P) is substantially parallel to the rotational axis (X).” Claim 18 depends from claim 1 and additionally recites that “the pivot axis (P) is substantially perpendicular to the handlebar mounting axis (HB) and substantially parallel to the rotational axis (X).” As to all of these claims, the Examiner determines that “[t]he adjustment or rotating of [Shahana ’158’s] sleeve 103 around the handlebar 101 would change the orientation of the shaft 216 [i.e., pivot axis (P)] relative to the handlebar 101 and hence the pivot axis P therewith as seen in FIGS. 1 and 2 because the shaft 216 is fixedly attached to the sleeve 103 as Appeal 2010-006418 Application 10/711,702 3 seen in FIG. 3.” Ans. 26. However, in independent claim 1, the handlebar mounting axis HB is defined by the mounting member, not the handlebar to which the mounting member is attached. As readily apparent from Shahana ’158’s Figure 3, any rotation of sleeve 103 around handlebar 101 would not alter the angular relationship between axes HB and P, but would merely turn axis P around axis HB.1 Axis P (i.e., shaft 216) is mounted to sleeve 103 and as such would rotate therewith while maintaining the same angle with respect to axis HB. Furthermore, the Examiner has determined that “Shahana [’158]’s pivot axis P is substantially perpendicular to the rotational axis X as shown in FIGS. 1-3.” Ans. 10. As the P and X axes are both mounted to sleeve 103, any rotation of sleeve 103 around handlebar 101 would not change the orientation between axes X and P. The Examiner does not indicate how axis P, which has been found to be substantially perpendicular to axis X, would become parallel to axis X by rotating sleeve 103 around handlebar 101. Thus, the Examiner lacks a sound basis for this determination. Accordingly, for the reasons discussed above, we agree with Appellant that claims 4, 5 and 18 were not properly rejected under 35 U.S.C. § 103(a) as unpatentable over Shahana ’158. 1 Appellant argues that “[t]he Board agreed with the Appellant that, . . . during any rotation of Shahana’s mounting member (103) around handlebar (101), pivot axis (P) will always be parallel to handlebar axis (HB).” Reh. Req. at 2 (citing Feb. 1, 2013 Decision at 4-5). However, this argument mistakes our findings regarding Appl. ’658, which Appellant references as “Shahana,” with our findings regarding Shahana ’158. Figures 4 and 5 of Appl. ’658 label the “HB” axis and show it as a dot, i.e., going into the page parallel to pivot shaft 216. However, Figures 4 and 5 of Shahana ’158 do not clearly show the orientation of the HB axis. Appeal 2010-006418 Application 10/711,702 4 Claims 7 and 20 Appellant argues claims 7 and 20 together. App. Br. 13. We select claim 7 for review with claim 20 standing or falling with claim 7. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 7 calls for an operating force receiving member extending from the pivot axis (P) and an operating force applying member extending from the operating force receiving member. Shahana ’158 discloses “[a]n interface member in the form of an operating tab 202 with an operating force receiving surface 203 [and] an operating force applying surface 204.” Shahana ’158, col. 3, ll. 26-29, figs. 3-5. As illustrated in Shahana ’158’s Figures 4 and 5, operating force applying surface 204 and operating force receiving surface 203 are opposite surfaces of operating tab 202. The Examiner finds that operating tab 202 of Shahana ’158 “comprises an operating force receiving member 203 (FIG. 3) extending from the pivot axis (P); and an operating force applying member 204 (FIGS. 4 and 5) extending from the operating force receiving member 203.” Ans. 10; see also id. at 27. Appellant, like the Examiner, refers to surfaces 203 and 204 as “members.” Appellant argues that the “operating force applying member (204) does not extend from the operating force receiving member (203),” because “[b]oth members are closely adjacent to and parallel to each other for their entire lengths.” App. Br. 13. Appeal 2010-006418 Application 10/711,702 5 In the context of claim 7, the plain meaning of “extending” is “projecting in one or more directions.”2 The Specification uses “extending” in accordance with its plain meaning. See Spec., [para. 27] (“operating member 434 is an L-shaped member having an operating force receiving member 437 extending from pivot shaft 438 and an operating force applying member 439 extending from pivot shaft 438 substantially perpendicular to operating force receiving member 437”); fig. 10. As such, we agree with the Examiner that Shahana ’158 discloses surface 204 extending (or projecting in one or more directions) from surface 203. Accordingly, for the reasons discussed above, we do not agree with Appellant that claims 7 and 20 were not properly rejected under 35 U.S.C. § 103(a) as unpatentable over Shahana ’158. DECISION We modify the Decision mailed February 1, 2013 to the extent discussed above. In summary, we reverse the rejection of claims 4, 5 and 18, and affirm the rejection of claims 7 and 20, under 35 U.S.C. § 103(a) as unpatentable over Shahana ’158. REQUEST GRANTED IN PART Klh 2 See WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED (1971).