Ex Parte Kawakami

Patent Trial and Appeal Board

Aug 18, 2016

12904460 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/904,460 10/14/2010
22919 7590 08/22/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Tatsuya KAWAKAMI
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-US100016 5996
EXAMINER
ELAHMADI, ZAKARIA
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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 TATS UY A KAWAKAMI
Appeal2014-004041
Application 12/904,460
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tatsuya Kawakami (Appellant) 1 seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-15. An oral hearing
was held on August 16, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Shimano Inc. as the real party in interest. Br. 4.
Appeal2014-004041
Application 12/904,460
BACKGROUND
The disclosed subject matter "relates to a bicycle brake and shift
operating device configured to operate a brake device and a gear changing
device of a bicycle." Spec. i-f 2. Claims 1, 4, and 5 are independent. Claim
1 is reproduced below:
1. A bicycle brake and shift operating device
compnsmg:
a bicycle mounting bracket;
a brake lever pivotally connected to the
mounting bracket about a first axis between a rest
position and a brake operating position;
a gear shifting mechanism attached to the
mounting bracket and configured to operate a
bicycle gear changing device to any one of a
plurality of gear positions;
a first gear shift member pivotally mounted
relative to the bicycle mounting bracket about a
second axis, the first gear shift member being
connected to the gear shifting mechanism to actuate
the gear shifting mechanism, the first gear shift
member being arranged to actuate the gear shifting
mechanism while the brake lever is in the brake
operating position; and
a connecting structure interconnecting the
brake lever and the first gear shift member together
such that the first gear shift member pivots about the
second axis in response to the brake lever being
pivoted about the first axis.
2
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Application 12/904,460
REJECTIONS
1. Claims 1-3 and 7-9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bertrand (WO 2005/044656 Al; published May 19, 2005).2
2. Claims 4, 10-12, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bertrand and Dal Pra (US 2007/0204716 Al;
published Sept. 6, 2007).
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bertrand and Dreischarf (US 6,758, 129 B2; issued July 6,
2004). 3
4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bertrand, Dal Pra, and Dreischarf.
DISCUSSION
Rejection I -The rejection of claims 1-3 and
7-9 under 35 U.S.C. § 102(b)
Independent claim l recites, among other limitations, "the first gear
shift member being arranged to actuate the gear shifting mechanism while
the brake lever is in the brake operating position." Br. 24 (Claims App.). In
addressing this limitation in the Rejection, the Examiner does not cite to a
specific disclosure in Bertrand. See Final Act. 2.
2 On August 16, 2012, the Examiner provided to Appellant the 38-
page International Publication of this reference (primarily in French) and a
10-page machine translation (into English). See Br. 10 n. l. In this decision,
citations to a specific page of "Bertrand" refer to the translation.
3 As noted by Appellant (see Br. 16 n.2), the Examiner lists claims 5
and 6 as rejected based on Bertrand and Dal Pra (Final Act. 4 (dated Feb. 28,
2013); Ans. 6), however, the discussion of claims 5 and 6 addresses Bertrand
and Dreischarf (Final Act. 5---6; Ans. 7-8).
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Application 12/904,460
Appellant contends that "[i]n Bertrand, the user cannot operate the
control (shift) lever 12 to perform a gear shifting operation during a braking
operation." Br. 10. According to Appellant, "[w]hen a braking operation is
performed in Bertrand, the brake lever 10 contacts the rocker 46 on the
control (shift) lever 12 via the stop 48, which causes the finger 46a to be
out of reach of the drawer 41" such that "during a braking operation 'the
movement of the control lever [12] is inoperative for a speed control.'" Id.
(citing Bertrand 7 and providing an annotated version of Figures 2 and 12).4
Appellant argues that, therefore, "the control (shift) lever 12 is not arranged
to actuate the gear shifting mechanism while the brake lever is in the brake
operating condition, as recited in independent claim 1." Id. at 11. We agree.
The Examiner responds that "even though Be[r]trand stated that the
gear shift member [12] is disengaged from the gear shift mechanism while
the brake lever [10] is [in the] brake [operating] position, this disengagement
mechanism [is] still considered an arrangement to actuate the gear shift
mechanism." Ans. 13. First, the Examiner states that the limitation at issue
does not necessarily require "that the first gear shift member can perform
shifting while the brake lever [is] in [the] brake [operating] position, it is just
arranged to actuate." Id. Second, the Examiner states that the limitation at
issue "does not mean that the first gear shift [member] directly actuate[s] the
gear shifting mechanism." Id. We do not agree with the Examiner's
proposed construction of the limitation at issue.
4 We understand the language provided in quotations by Appellant to
refer to the statement: "The control lever becomes inoperable for a speed
control." Bertrand 7.
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Application 12/904,460
As to the first point, we agree with Appellant that the Examiner is
"conflating the two concepts of ( 1) 'an arrangement to' do something and
(2) 'being arranged to ... ' do something in a certain circumstance such as
during braking." Br. 12. As noted by Appellant, "[b ]roadly speaking, the
control (shift) lever 12 of Bertrand is always 'an arrangement' provided to
actuate the gear shift mechanism in the sense that this is the purpose of its
provision in the shifter," however, claim 1 requires "the gear shift member
to be arranged to actuate the gear shift mechanism while the brake lever is
in the brake operating position." Id. When giving due weight to the
"while" clause, we agree with Appellant that the identified structure in
Bertrand (see Fig. 12) does not satisfy the limitation at issue. See Br. 11
(arguing that one of ordinary skill "would not consider a disengaged lever to
be arranged to actuate the gear shifting mechanism" (emphasis omitted));
see also Bertrand 7 (discussing Figure 12 and stating, "[t]he control lever
becomes inoperable for a speed control" and, "[u]nder these conditions[,] the
movement of the joystick is broken for speed control").
As to the second point, the Examiner has not demonstrated that, when
configured as in Figure 12 of Bertrand, rocker 46 could be used to actuate-
even indirectly----element 41 via control lever 12. See Bertrand 6 (discussing
the operation of control lever 12 in the context of the structure in Figure 11 ).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2, 3, and 7-9, which depend from claim 1.
Rejection 2 - The rejection of claims 4, 10--12,
14, and 15 under 35 U.S.C. § 103(a)
Independent claim 4 recites, among other limitations, "the brake lever
and the first gear shift member being arranged with respect to each other in a
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Application 12/904,460
non-contacting relationship such that the brake lever and the first gear shift
member are physically separated from each other with the brake lever in
both the rest position and during a pivot operation of the brake lever from
the rest position to the brake operating position." Br. 25 (Claims App.). The
Examiner found that Bertrand does not satisfy this limitation but that Dal Pra
does. See Final Act. 4--5 (citing Dal Pra, Fig. 2).5
Appellant argues that modifying Bertrand based on Dal Pra "would
not have been obvious or even desirable" because
[i]f the stop 48 of the brake lever 10 failed to contact the rocker
46 of the control (shift) lever 12 (i.e., if Bertrand were modified
such that the brake lever 10 and the control (shift) lever 12 were
in a non-contacting relationship as proposed by the Examiner),
then the shifter of Bertrand would/ail to disengage the control
(shift) lever 12 during braking.
Br. 15 (discussing Figure 12 of Bertrand). According to Appellant, "[o]ne of
ordinary skill in the art of bicycle control devices would certainly not have
found obvious a modification which \vouldfrustrate an objective of
Bertrand." Id. The Examiner does not address this argument. See Ans. 13.
We agree with Appellant that the Examiner has not shown that claim
4 would have been obvious to one of ordinary skill in the art. First, we note
that the Examiner failed to articulate any reason to modify Bertrand based
on the teachings of Dal Pra to support the conclusion of obviousness of
claim 4. See Final Act. 5. "In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a prima facie case of
5 The Examiner cites Figure 2 of Dal Pra, but refers to elements 38
and 32, which are not used in Figure 2. See Final Act. 5. We understand the
Examiner's statement to refer to brake lever 8 and gearshift lever 2 shown in
Figures 1 and 2 of Dal Pra. See Dal Pra i-fi-146, 49, 55.
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Application 12/904,460
obviousness. Only if that burden is met, does the burden of coming forward
with evidence or argument shift to the applicant." In re Rijckaert, 9 F.3d
1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). Here, the Examiner has not met that burden.
Second, we agree with Appellant that modifying Bertrand as
implicitly proposed by the Examiner would render the system of Bertrand
unsatisfactory for the intended purpose identified by Appellant. See
Bertrand 7 (discussing the operation of brake lever 10). Thus, we agree that
the proposed modification would not have been obvious to one of ordinary
skill in the art. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
For these reasons, we do not sustain the rejection of claim 4, or the
rejection of claims 10-12, 14, and 15, which depend from claim 4.
Rejection 3-The rejection of claims
5 and 6 under 35 U.S.C. § 103(a)
Independent claim 5 recites, among other limitations, "the connecting
structure including a link member with a first end coupled to the first gear
shift member and a second end movably coupled to the brake lever, the link
member, the mounting bracket, the brake lever and the first gear shift
member forming a four-bar linkage." Br. 26 (Claims App.). The Examiner
found that Bertrand satisfies much of the limitation at issue but "does not
disclose a second end movably coupled to the brake lever." Final Act. 5---6.
The Examiner found, however, that "Dreischarf teaches a second end (pivot
end[] fig 1) movably coupled to a brake lever." Id. at 6. According to the
Examiner, it would have been obvious "to have modified the connection
between the link member [i.e., elements 46 and 48] and the brake lever
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Application 12/904,460
[element 10] taught in Bertrand to [be a] pivot connection to have [a]
secured connection between the link member and brake lever." Id.
Appellant contends that the reasoning provided to modify Bertrand
with the teachings of Dreischarf is "insufficient to establish a prima facie
case of obviousness." Br. 18. Appellant argues that, prior to modification,
"stop 48 of Bertrand is non-movably connected to the brake lever 10 so that
the movement of the brake lever 10 can be directly transmitted to the rocker
46 to ensure that the control (shift) lever 12 is inoperative during the braking
operation." Id. According to Appellant, "[t]his connection is already
secure" and "modifying the stop 48 to be movably connected to the brake
lever 10 as required by the Examiner's rejection would most likely make the
connection less secure because the movement of the brake lever 10 would
not be directly transmitted to the rocker 46." Id. The Examiner does not
address this argument or otherwise indicate that Appellant's contention is
incorrect. See Ans. 14.
For the reasons argued by Appellant as set forth above, we agree that
that the Examiner has not provided adequate reasoning to modify Bertrand
with the relied-upon teachings of Dreischarf to support the conclusion of
obviousness of claim 5. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Thus, we do not sustain the rejection of claim 5, or the rejection of
claim 6, which depends from claim 5.
Rejection 4-The rejection of claim 13
under 35 U.S.C. § 103(a)
Claim 13 depends from claim 4. Br. 27-28 (Claims App.). The
Examiner's added reliance on Dreischarf does not remedy the deficiencies in
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Application 12/904,460
the combined teachings of Bertrand and Dal Pra, discussed above (see supra
Rejection 2). Thus, for the same reasons discussed above, we do not sustain
the rejection of claim 13.
DECISION
We REVERSE the decision to reject claims 1-15.
REVERSED
9