Ex Parte KITAMURA et al

Patent Trial and Appeal Board

Jul 30, 2018

13162710 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/162,710 06/17/2011
22919 7590 08/01/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Satoshi KITAMURA
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-US115035 8096
EXAMINER
CAMPOS, JR, JUAN J
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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
Exparte SATOSHI KITAMURA and SHINTARO MORI 1
Appeal2016-007088
Application 13/162,710
Technology Center 3600
Before: NEIL T. POWELL, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1, 2, 5-8, 11-18, 20, and 21. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants' Appeal Brief indicates that Shimano Inc. is the real party in
interest. Appeal Br. 3.
2 An oral hearing was conducted on July 3, 2018.
Appeal2016-007088
Application 13/162,710
CLAIMED SUBJECT MATTER
The claims are directed to a bicycle chain tensioner device. Claim 1,
reproduced below, with emphases added, is illustrative of the claimed
subject matter:
1. A bicycle shifting system comprising:
an internally geared hub including a bicycle hub
transmission including at least a hub shell and a motor unit, the
hub shell being configured to rotate around a rotational axis;
a base member configured to be attached to the internally
geared hub;
a pulley supported by the base member and arranged to
engage with a bicycle chain, the pulley including a dynamo that
generates electrical energy in response to the pulley being rotated
by the bicycle chain;
an electrical storage unit that is disposed on the base
member, the electrical storage unit being electrically coupled to
the motor to supply power to the motor, and the electrical storage
unit being electrically coupled to the dynamo to store electrical
energy generated by the dynamo; and
an AC-to-DC rectifying device disposed on the base
member to rectify electric current generated by the dynamo, the
AC-to-DC rectifying device being coupled to the electric storage
unit.
Appeal Br. 15 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Romano
Campagnolo
Fukuda
Kitamura
Urabe
Yamamoto
us 5,470,277
US 2004/0063528 Al
US 2006/0183584 Al
US 2006/0226879 Al
US 2006/0240920 Al
US 2010/0113200 Al
2
Nov. 28, 1995
Apr. 1, 2004
Aug. 17, 2006
Oct. 12, 2006
Oct. 26, 2006
May 6, 2010
Appeal2016-007088
Application 13/162,710
REJECTIONS
(I) Claims 1, 2, 5-8, 11, and 12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Romano, Kitamura, and Fukuda.
(II) Claims 14, 17, 18, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Romano, Kitamura, Fukuda, and the Examiner's
Official Notice.
(III) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Romano, Kitamura, Fukuda, and Campagnolo.
(IV) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Romano, Kitamura, Fukuda, the Examiner's Official Notice, and
Campagnolo.
(V) Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Romano, Kitamura, Fukuda, the Examiner's Official Notice, and
Urabe.
(VI) Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Romano, Kitamura, Fukuda, the Examiner's Official Notice, and
Yamamoto.
OPINION
Rejection(!); claims 1, 2, 5---8, 11, and 12
The Examiner finds that Romano discloses many of the elements
required by claim 1, but does not disclose an internally geared hub as
recited. Non-Final Act. 2-3. Nonetheless, the Examiner finds that Fukuda
discloses an internally geared hub including a hub shell (housing member
190). Id. at 3. With respect to the requirement that the hub shell recited in
claim 1 be "configured to rotate around a rotational axis," the Examiner
states, "the hub shell (190) of Fukuda is configured to (i.e. capable of)
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Appeal2016-007088
Application 13/162,710
rotating about a rotation axis, as one can unbolt/unthread mounting bolt 182
and then rotate 190 about the rotation axis of 182." Id. at 11 (emphasis
added). The Examiner determines that modifying the arrangement in
Romano to include this structure would provide a compact design. Id. at 3-
4.
Appellants contend, among other things, that (i) housing member 190
is not configured to rotate around a rotational axis, and (ii) Fukuda fails to
disclose an internally geared hub. Appeal Br. 8-11. As to argument (ii),
Appellants assert, "In this application, when discussing 'an internally geared
hub', the specification states that an internally geared hub includes a
conventional bicycle hub transmission 46 that is provided with an electric
motor unit 48 such as a hub transmission sold by Shimano, Inc. under the
brand name Nexus®." Id. at 9 (citing Spec. ,r 21 3).
In response, the Examiner maintains the position set forth in the Non-
Final Action, stating:
Figure 4 of Fukuda shows the hub shell 190 as part of a bicycle
transmission system. As seen on Figures 1-2, the bicycle
transmission is rotatable (by partially unscrewing mounting bolt
182, and then rotating the transmission about the axis of 182)
about the center of a wheel ( and its hub axle, also see figures 1-
2 of Fukuda). And as shown in Figure 4, the hub shell 190 of
Fukuda surrounds gearing (207, 208, and/or other gears as
discussed in paragraphs 0022-0026). Thus, the hub shell of
Fukuda still meets the Appellants broad limitation of "a hub
shell", and the internally geared hub of Fukuda still meets the
Appellants broad limitation of "an internally geared hub", as
claimed in claims 1 and 14.
3 As the trademark "Nexus" does not appear in paragraph 21 of the
Specification, it appears Appellants intended to refer to paragraph 19, where
this trademark is first used in the Specification.
4
Appeal2016-007088
Application 13/162,710
Ans. 3 ( emphases added). Thus, the Examiner maintains the position that
structure that allows rotation only after partial unscrewing of mounting bolt
182 qualifies as structure "configured to rotate around a rotational axis."
Further, the Examiner's position regarding the internally geared hub (and
hub shell) recited in claim 1 appears to be that any structure having gears
and surrounded by a housing meets this claim requirement.
Paragraph 19 of the Specification states, "The hub shell 54 rotates
around the hub axle 56 with the planetary gear transmission (not shown)
operatively disposed between the hub shell 54 and the hub axle 56. The hub
axle 56 defines an axle or rotational axis of the hub shell 54 of the internally
geared hub 12." The Specification further states, "Referring back to Figure
3, the internally geared hub 12 includes a conventional bicycle hub
transmission 46 that is provided with an electric motor unit 48 such as a hub
transmission sold by Shimano, Inc. under the brand name Nexus®." Id.
In light of the Specification, we determine that the Examiner's
interpretation of claim 1 is unreasonably broad in at least two respects. First,
the Examiner's interpretation of claim 1 does not require the hub shell to be
"configured to rotate around a rotational axis" during a fully assembled
state. Rather, the Examiner's interpretation of claim 1 allows for partial
disassembly (unscrewing) of the structure supporting housing member 190
of Fukuda in order to meet this limitation. Consistent with the Specification,
claim 1 requires the hub shell to be "configured to rotate" while the shifting
system is in a fully assembled state. Second, in light of the Specification, we
understand the term "internally geared hub" in claim 1 to refer to a hub
having inside it the gears of a bicycle transmission (the gears that define the
ratio of pedaling to rotation of the driven wheel), not merely a structure
having gears of any kind. In this regard, claim 1 explicitly recites that the
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Appeal2016-007088
Application 13/162,710
internally geared hub includes a bicycle transmission. The Examiner's
unreasonably broad interpretation of claim 1 led to the unsupported finding
that Fukuda discloses an internally geared hub including a bicycle hub
transmission including at least a hub shell and a motor unit, the hub shell
being configured to rotate around a rotational axis. Accordingly, we do not
sustain the Examiner's rejection of claim 1, and claims 2, 5-8, 11, and 12
depending therefrom, as unpatentable over Romano, Kitamura, and Fukuda.
Rejection (11); claims 14, 17, 18, and 21
Independent claim 14 recites the same elements discussed above
regarding claim 1, and claims 17, 18, and 21 depend, directly or indirectly,
from claim 14. See Appeal Br. 15, 17 (Claims App.). In the rejection of
claim 14, the Examiner makes the same findings regarding the teachings of
Fukuda, based on the same unreasonably broad claim interpretation, as
discussed above regarding Rejection (I). See Non-Final Act. 5-6.
Accordingly, for the same reasons discussed above regarding Rejection (I),
we do not sustain Rejection (II).
Rejections (III-VI); claims 13, 15, 16, and 20
Claims 13, 15, 16, and 20 depend from one of claims 1 and 14.
Appeal Br. (Claims App.). The Examiner does not rely on official notice,
Campagnolo, Urabe, or Yamamoto in any way that would remedy the
deficiencies discussed above regarding Fukuda. See Non-Final Act. 7-10.
Accordingly, for the reasons discussed above regarding Rejections (I) and
(II), we do not sustain Rejections (III}-(VI).
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Appeal2016-007088
Application 13/162,710
DECISION
The Examiner's decision to reject claims 1, 2, 5-8, 11-18, 20, and 21
is reversed.
REVERSED
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