Ex Parte Shahana et al

Board of Patent Appeals and Interferences

Jan 24, 2012

11600189 (B.P.A.I. Jan. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SATOSHI SHAHANA, YO MATSUBAYASHI, and
KANJI KIRIMOTO
____________________

Appeal 2010-001611
Application 11/600,189
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
EDWARD A. BROWN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001611
Application 11/600,189

2
STATEMENT OF THE CASE
Satoshi Shahana et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1 and 3-14 under 35 U.S.C.
§ 102(b) as anticipated by Swager (US 4,059,871, iss. Nov. 29, 1977).
Appellants cancelled claims 2 and 15-21. Amendments filed Aug. 1, 2007,
and Apr. 18, 2008; Advisory Action mailed Nov. 13, 2009. We have
jurisdiction under 35 U.S.C. § 6(b). Appellants' representative presented
oral argument on January 19, 2012.
The Examiner also entered a new ground of rejection of claim 3 under
35 U.S.C. § 112, second paragraph, as indefinite, on the basis that it depends
from canceled claim 2. Ans. 2. Appellants do not contest this rejection and,
in fact, “acknowledge that claim 3 is indefinite due to dependency on a
cancelled claim.” Reply Br. 5. Accordingly, we summarily sustain the
rejection of claim 3 under 35 U.S.C. § 112, second paragraph. See In re
Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal).

THE INVENTION
The claims are directed to a control cable fixing device for a bicycle
component. Spec., para. [0002]. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A bicycle control cable fixing device adapted to be coupled
to a bicycle component, said bicycle control cable fixing
device comprising:
a support structure having a cable support surface; and
Appeal 2010-001611
Application 11/600,189

3
a cable fixing structure non-threadedly supported on said
support structure to rotate about a rotation axis, said cable
fixing structure having a cable pressing surface,
said cable fixing structure and said support structure
being arranged and configured such that an inner wire of a
bicycle control cable is secured between said cable support
surface and said cable pressing surface in response to
rotational movement of said cable fixing structure about said
rotation axis to a cable fixing position from a cable release
position,
said fixing structure including a cam portion having a
peripheral cam surface concentrically arranged relative to
said rotation axis that is rotationally supported by said
support structure and an elongated lever portion extending
radially outwardly from said cam portion, said peripheral
cam surface being configured and arranged to move said
cable pressing surface toward said cable support surface
when said cable fixing structure is moved from said cable
release position toward said cable fixing position using said
lever portion,
said cam portion and said lever portion being configured
and arranged such that said lever portion moves from an
extended position to a retracted position to move said cable
fixing structure from said cable release position to said cable
fixing position, said lever portion moving toward the inner
wire when said lever portion is moved from said extended
position to said retracted position when the inner wire is
disposed between said cable support surface and said cable
pressing surface.

OPINION
The issue presented in this appeal is whether the Examiner erred in
finding that Swager’s clamping device comprises a fixing structure having a
cam portion and an elongated lever portion configured and arranged such
that said lever portion moves toward the inner wire from an extended
Appeal 2010-001611
Application 11/600,189

4
position to a retracted position to move said cable fixing structure from said
cable release position to said cable fixing position, when the inner wire is
disposed between said cable support surface and said cable pressing surface,
as called for in claim 1. We agree with Appellants that the Examiner’s
finding is erroneous. See Reply Br. 6-8. Thus, we do not sustain the
rejection of claim 1 and of dependent claims 4-14, which depend from claim
1, as anticipated by Swager. As conceded by Appellants, “claim 3 is
indefinite due to dependency on a cancelled claim.” Reply Br. 5. Thus, we
do not reach a determination on the rejection of claim 3 as anticipated by
Swager. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele,
305 F.2d 859, 862 (CCPA 1962) (holding that determinations as to
obviousness cannot be made when claims are indefinite).
The elongate portion of Swager’s trigger arm 20 disposed outwardly
of the pivot 22, which reasonably corresponds to the “elongated lever
portion” in Appellants’ independent claim 1, is moved (i.e., pivoted) away
from the cable 48 from a retracted cable release position (fig. 2) to an
extended cable fixing position (fig. 6). This is the opposite of the claimed
configuration.
Apparently appreciating this distinction between Swager’s clamping
device and the subject matter of claim 1, the Examiner arbitrarily selects a
portion of Swager’s trigger arm 20 proximate the bosses 14, 16 of housing
10, 12 and pivot 22 as corresponding to the claimed “lever portion,”1 and
asserts that this “lever portion” moves toward the wire along an arc from the
extended position shown in figure 2 to the retracted position shown in figure

1 See Ans. 6 (identifying contents of dashed circles in annotated
reproductions of figures 2 and 6 of Swager as “lever portion”).
Appeal 2010-001611
Application 11/600,189

5
6. Ans. 5. This position is unreasonable. The Examiner’s reliance on the
presence in claim 1 of the term “portion” following the term “lever” in an
attempt to justify the Examiner’s position is misplaced. Claim 1 recites a
fixing structure including a cam portion and an elongated lever portion.
When read in this context, it is clear that the term “portion” in “lever
portion” refers to an elongated lever portion of the fixing structure, not to a
portion of the lever.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to claim
3 and reversed as to claims 1 and 4-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

hh