Ex Parte MIKI et al

Patent Trial and Appeal Board

Jun 25, 2018

13195050 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/195,050 08/01/2011
22919 7590 06/27/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Y oshimitsu MIKI
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-US115202 1211
EXAMINER
LUONG,VINH
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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 YOSHIMITSU MIKI,
KAZUTAKA FUKAO, and KENT ARO KOSAKA 1
Appeal2016-005847
Application 13/195,050
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action2
rejecting claims 3, 7, 16, 17, and 19--22. Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
Appellants' representative presented argument at an oral hearing held
on June 19, 2018.
We REVERSE.
1 Shimano, Inc. is identified as the real party in interest. Appeal Br. 3.
2 Refers to the Non-Final Office Action mailed April 13, 2015 (hereinafter
"Non-Final Act.").
Appeal 2016-005847
Application 13/195,050
CLAIMED SUBJECT MATTER
Claim 3, the sole independent claim, is reproduced below.
3. A bicycle component control device comprising:
a bracket having a gripping portion and an interior space;
a bicycle component operating unit disposed in the
interior space of the bracket, the bicycle component operating
unit including an operating member protruding toward outside
of the interior space,
the bracket including a plurality of bracket parts
consisting of a first bracket part and a second bracket part
which are separate pieces from each other,
the plurality of bracket parts being non-movably fixed to
at least one adjacent one of the plurality of bracket parts and
defining the interior space therebetween,
the plurality of bracket parts being configured relative to
each other such that the bracket has a mounting surface for
mounting a bicycle handlebar, an upper surface extending from
the mounting surface, a lower surface extending from the
mounting surface, a first side surface extending from the
mounting surface between the upper and lower surfaces, and a
second side surface extending from the mounting surface
between the upper and lower surfaces,
the plurality of bracket parts being further configured
relative to each other such that a connecting seam formed on
the bracket extends along at least three of the mounting surface,
the upper surface, the lower surface, the first side surface and
the second side surface, the connecting seam being formed
between the first and second bracket parts such that the
connecting seam separates the bracket along the upper surface,
the lower surface and the mounting surface; and
a handlebar clamp attached to the mounting surface of
the bracket,
the mounting surface including a recess configured to
receive the handlebar damp, the connecting seam extending
along the mounting surface so as to divide the recess into two
parts.
Appeal Br. 12-13 (Claims App'x).
2
Appeal 2016-005847
Application 13/195,050
REJECTIONS
Claims 3, 16, 17, and 19-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chilcote (US 4,921,081, iss. May 1, 1990) and Kawakami
(US 2009/0165591 Al, pub. July 2, 2009).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chilcote, Kawakami, and Miki (US 2010/0083786 Al, pub. Apr. 8, 2010).
ANALYSIS
Claims 3, 16, 17, and 19-22
Rejected Over Chilcote and Kawakami
A dispositive issue is whether it would have been obvious to a person
of ordinary skill in the art to modify Chilcote so the that first and second
bracket parts (deviating projections 52, 54) are formed separately and then
connected together to form a seam based on Kawakami's teaching to form
separate bracket parts 32, 34 and connect them. Non-Final Act. 3--4.
The Examiner determines it would have been obvious to a person of
ordinary skill in the art to modify Chilcote this way as a "simple substitution
of one known element for another or as the mere application of a known
technique to a piece of prior art ready for the improvement" which "does no
more than yield predictable results." Id. at 4 (citation omitted); Ans. 3.
Appellants argue that doing so would undermine Chilcote's object of
forming bracket housing 14 with deviating projections 52, 54 so heads 227
of clamp catch pins 22 pass through apertures 230 on deviating projections
52, 54 when bracket 14 is removed from housing clamp 20. Appeal Br. 7-9.
Appellants argue that Chilcote would be rendered unsatisfactory for this
intended purpose if deviating projections 52, 54 were formed as two separate
parts and then non-movably fixed to one another as claimed. Id.
3
Appeal 2016-005847
Application 13/195,050
Appellants have the better position in view of Chilcote' s teaching of a
novel structure for mounting the brake handle housing (bracket 14) to the
handlebar. Chilcote, 5: 19--21. To accomplish this objective, brake handle
housing 14 includes two extending projections 52, 54 that gradually deviate
from one another in opposing directions to receive two clamp catch pins in
their respective apertures 230. Id. at 9:21-34. When deviating projections
52, 54 are brought together by increasing the tension in clamp screw 116, the
heads of the catch pins are offset from apertures 230 and retained therein to
secure housing 14 and clamp 20 to handlebar 16. Figures 3 and 4, which are
reproduced below, illustrate these elements of Chilcote's brake housing.
4
Appeal 2016-005847
Application 13/195,050
Figure 3 illustrates deviating projections 52, 54 with apertures 230
before heads 227 of catch pins 22 are inserted therein. Figure 4 illustrates
deviating projections that are clamped together by screw 116 so heads 227
of catch pins 22 are secured in apertures 230 to lock housing 14 to handlebar
16. Id. at 5:20-53, 12:12--41. Housing 14 can be detached from handlebar
16 simply by releasing tension in clamp screw 116 so deviating projections
51, 54 of housing 14 deflect away from each other such that apertures 230
become centered around flat heads 227 of clamp catch pin 22, enabling the
heads 227 to slip easily through apertures 230. Id. at 12:42--49.
Given these teachings of Chilcote, we are not persuaded that a skilled
artisan would have been motivated to form deviating projections 52, 54 of
Chilcote' s housing 14 as two separate pieces, as claimed, or that a skilled
artisan would have considered the modification to be an improvement or an
application of a known technique for predictable results. The Examiner has
not explained how such modification would have improved the operation of
Chilcote' s novel mounting structure rather than undermining the ability of
housing 14 to mount and dismount from catch pins 22 as Chilcote desires.
In this regard, Kawakami teaches to form bicycle shift housing 30 as
two separate parts (upper and lower covers 32, 34) that are coupled by three
screws 36 to form a seam without any of the deflection that Chilcote uses.
See Kawakami i-f 37, Figs. 3, 4. Because Chilcote teaches a different bracket
configuration that functions differently than Kawakami's two-part housing,
we are not persuaded that the proposed modification of Chilcote would have
been viewed as a matter of engineering choice or as mechanical equivalents
absent some evidence that a bracket of two separate bracket parts operate in
the same way as Chilcote's deviating projections 52, 54 do. See Ans. 4, 5.
5
Appeal 2016-005847
Application 13/195,050
Nor has the Examiner explained how Chilcote's deviating projections
52, 54 produce a "connecting seam [that] separates the bracket along the
upper surface, the lower surface and the mounting surface" as claimed. The
Examiner's annotation of Figure 3 of Chilcote to illustrate this finding that a
joint connects bracket 14 along the upper surface, the lower surface, and the
mounting surface (Non-Final Act. Appendix at 1-2) does not identify a joint
or seam along a bottom surface as required by claim 3.
Thus, we do not sustain the rejection of claim 3 or its dependent
claims 16, 17, and 19-22.
Claim 7
Rejected Over Chilcote, Kawakami, and Miki
The Examiner relies on Miki to teach a mechanical shifting unit as
recited in claim 7. Non-Final Act. 5. Appellants argue that Miki does not
cure the deficiencies of Chilcote and Kawakami as to claim 3 from which
claim 7 depends. Appeal Br. 10; Reply Br. 6. We agree. Thus, we do not
sustain the rejection of claim 7.
DECISION
We reverse the rejections of claims 3, 7, 16, 17, and 19-22.
REVERSED
6