Ex Parte Sugimoto et al

Patent Trial and Appeal Board

Jun 22, 2016

13253113 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/253, 113 10/05/2011
22919 7590 06/24/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Akinobu SUGIMOTO
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-US115253 3346
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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 AKINOBU SUGIMOTO, EIGO KUROIW A,
TOSHIO TETSUKA, and YUSUKE NISHIMOTO
Appeal2014-002326
Application 13/253, 113
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Akinobu Sugimoto et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1---6 and
19-25. Claims 7-18 are withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b ). An oral hearing was conducted on June 9, 2016, with
Jeffrey J. Howell, Esq., appearing on behalf of Appellants.
We AFFIRM-IN-PART, and designate the rejections affirmed as
NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b).
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Application 13/253, 113
THE INVENTION
Appellants' invention is directed to a bicycle crank assembly.
Independent claims 1 and 22, reproduced below, are illustrative:
1. A bicycle crank assembly comprising:
a first sprocket including a plurality of first teeth and at least one
first mounting portion having a first mounting opening;
a second sprocket including a plurality of second teeth and at
least one second mounting portion having a second mounting
openmg;
a crank arm including at least one sprocket attachment portion
having a third mounting opening;
a sprocket fixing structure securing the first and second sprockets
to the crank arm via the first, second and third mounting
openings; and
an alignment tube extending through at least two of the first,
second and third mounting openings, the alignment tube being
non-detachably maintained in a fixed relationship with one of the
first sprocket, the second sprocket and the crank arm.
22. A bicycle crank assembly comprising:
a first sprocket including a plurality of first teeth and at least one
first mounting portion having a first mounting opening;
a second sprocket including a plurality of second teeth and at
least one second mounting portion having a second mounting
openmg;
a crank arm including at least one sprocket attachment portion
having a third mounting opening;
a sprocket fixing structure including a fixing nut having an
internal thread and a fixing bolt having an external thread, the
external thread of the fixing bolt being threaded into the internal
thread of the fixing nut to secure the first and second sprockets
to the crank arm via the first, second and third mounting
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openings, the fixing nut being non-detachably embedded in a
resin part of the first sprocket; and
an alignment tube extending through at least two of the first,
second and third mounting openings.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1---6, 19, 22, and 23 under 35 U.S.C. § 102(b) as being
anticipated by Shiraishi (US 2008/0161145 Al, published
July 3, 2008);
(ii) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Shiraishi in view ofNonoshita (US 2005/0282672 Al,
published Dec. 22, 2005);
(iii) claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Shiraishi in view ofYamanka (US 5,988,016, issued
Nov. 23, 1999); and
(iv) claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Shiraishi.
ANALYSIS
Claims 1-6, 19, 22, and 23-Anticipation by Shiraishi
Appellants present arguments for the separate patentability of claims
1, 2, 4 (and 6), 19, and 22. Each of those claims will be separately
addressed. Claims 3 and 5 are not separately argued, and thus stand or fall
with claim 1, from which they depend. Claim 23 is not separately argued,
and thus stands or falls with claim 22, from which it depends.
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Claim 1
Appellants maintain that Shiraishi does not disclose the limitation in
claim 1 requiring an alignment tube to be non-detachably maintained in a
fixed relationship with one of a first sprocket, a second sprocket, and a crank
arm. Appeal Br. 9-11; Reply Br. 4---6. The Examiner's findings as to this
limitation are that Shiraishi discloses an alignment tube 51 b that is
non-detachably maintained, by screw 54, in a fixed relationship with one of
the first and second sprockets or a crank arm. Final Act. 2.
The reason Appellants and the Examiner have opposing views as to
whether Shiraishi discloses this limitation is that there is disagreement as to
the proper construction to be given the term "non-detachably maintained."
Appellants argue that, because fixing nut 51 and fixing bolt 5 2 in Shiraishi
can, using tools, easily be detached from each other and from the
chainwheels 41, 42, and because screw 54 can also be removed using a
screwdriver, the alignment tube portion 51 b of fixing nut 51 is not non-
detachably maintained as claimed. Appeal Br. 9-10. Appellants further
argue that the Examiner's position fails to give the term "non-detachably" its
plain and ordinary meaning, which, according to Appellants is that
"non-detachable" refers to a connection with which two parts
cannot be separated without damaging one or both parts or
forcefully br[e]aking the connection between the parts.
Id. at 10-11.
The Examiner's position is that "once the sprocket fixing structure
(45) is assembled, the screw (54) maintains the alignment tube in a
non-detachable and fixed relationship with one of the sprockets and the
crank arm." Final Act. 8. The Examiner additionally responds to
Appellants' arguments by noting ( 1) that the Specification does not define
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the term "non-detachably" in the manner of the above-quoted language
proffered by Appellants; and (2) given that a definition of "detach" is
"disengage," the alignment tube of Shiraishi "is non-detachable because it
does not detach from the sprocket when a user operates the bicycle." Ans. 8.
Appellants respond that, by including conditions directed to assembly and
operation, the Examiner employs a special definition and not a plain
meaning, and that "the definition should be applied to the structure of the
device at all times, not [only] during certain activities or events. Reply Br.
5.
We note, at this point, that Appellants correctly point out (Appeal Br.
11 ), in an argument directed to claim 2, that the Examiner's reliance on
screw 54 as operating to maintain alignment tube 51 b in a fixed relationship
with any of the first sprocket, second sprocket, or crank arm is flawed.
Appellants cite to Figure 5 of Shiraishi as evidencing that the head of screw
54 does not contact the fixing nut 51, and thus screw 54 does not perform as
asserted by the Examiner. The Examiner appears to acquiesce in this
position, stating that, "[e]ven though the head of the screw (54) in [sic, is]
not directly in contact with the fixing nut ( 51) the fixing nut is still clearly
non-detachable because in operation the fixing nut remains fastened and
does not come undone." Ans. 9.
Notwithstanding that screw 54 of Shiraishi does not participate in
non-detachably maintaining the alignment tube in the claimed fixed
relationship, the issue as to whether the Shiraishi construction does so
otherwise remains. Nut 51, with integral alignment tube 51 b, threadingly
engages bolt 52 in the Shiraishi crank arm assembly, maintaining the
alignment tube in a fixed relationship with both first and second sprockets
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41, 42, as well as with crank arm 40. The issue joined is thus essentially the
same as before, i.e., whether a threaded connection can be regarded as
providing a non-detachable maintaining of a fixed relationship between the
claimed components.
Both Appellants and the Examiner include citations to paragraph 27 of
the Specification, which equates the term "non-detachably" to "firmly."
Reply Br. 4; Ans. 8 (erroneously designating para. 29). A dictionary
definition of "firm" as it pertains to the structure at issue is "securedly fixed
in place." 1 That, as Appellants note, the separation of the relevant
components of the Shiraishi construction requires the use of tools, evidences
in our view that the components are securedly, i.e., firmly and non-
detachably, fixed in place, contrary to Appellants' position that the use of
tools is indicative of detachability (Appeal Br. 9-10; Reply Br. 6, 9-10).
Appellants' argument that "non-detachable" should be interpreted as
components being inseparable in the absence of damage to the parts or a
forceful breaking of the connection is not persuasive given the different
meaning provided in the Specification. Appellants' argument that the claim
term should not be construed only in an assembled condition or in operation
is additionally not persuasive, in that claim 1 is directed to a "bicycle crank
assembly," and further indicates that the alignment tube extends through at
least two of three claimed mounting openings, those openings being located
on first and second sprockets and on a crank arm, which is indicative of the
components being in an assembled state.
1 Dictionary.com, http://www.dictionary.com/browse/firm?s=t, last accessed
on June 16, 2016.
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The rejection of claim 1 as being anticipated by Shiraishi is sustained.
Claims 3 and 5 fall with claim 1.
Claim 2
Claim 2 depends from independent claim 1 and recites that, in
addition to the alignment tube being non-detachably maintained in a fixed
relationship with one of the first sprocket, second sprocket, and crank arm,
the alignment tube is to be non-detachably fixed to or integrally formed with
the first sprocket.
Appellants' arguments are essentially the same as those presented for
claim 1. Appellants maintain that, because it is possible to "[use] a
screwdriver and an Allen wrench to remove the fixing nut 51 and the fixing
bolt 52," those components are configured to be detachable, and thus not
non-detachably fixed to one another, or presumably to the first sprocket.
Appeal Br. 12. As with claim 1 above, the Shiraishi bicycle crank assembly
is seen as including an alignment tube that is firmly, i.e., non-detachably,
fixed to the first sprocket. As also discussed above, Appellants'
acknowledgement that tools are required to disassemble the Shiraishi
assembly evidences that the components are held in a non-detachable fixed
state in the assembly.
The rejection of claim 2 as being anticipated by Shiraishi is sustained.
Claims 4 and 6
We agree with Appellants that the Examiner has failed to establish, by
a preponderance of the evidence, that Shiraishi discloses a fixing nut that is
non-detachably embedded in a resin part of a first sprocket. See Appeal Br.
12-13; Reply Br. 7-8. The rejection of claims 4 and 6 as being anticipated
by Shiraishi is not sustained.
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Claim 19
Claim 19 depends from claims 1 and 3, and requires that the fixing nut
of the crank assembly have a thread that is accessible only from a bicycle
frame-facing side of the assembly, such that the fixing bolt is installed from
the frame-facing side. We agree with Appellants that the Examiner has
misinterpreted this limitation in attempting to correlate the Shiraishi
structure to the claim language.
The Examiner presents an annotated version of a portion of Figure 5
of Shiraishi at page 4 of the Final Action, with the annotation and discussion
of the figure indicating that the threads of fixing nut 51 are accessible only
by unscrewing the nut from the frame side of the crank assembly. However,
in the context of claim 19 requiring that the threads of the fixing nut be
accessible in relation to installation of the fixing bolt, it is seen in Figure 5 of
Shiraishi that the threads of fixing nut 51 are actually accessible from the
side of the crank arm assembly opposite to the frame-facing side, and that
the fixing bolt 52 is secured to the nut from that opposite side.
The rejection of claim 19 as being anticipated by Shiraishi is not
sustained.
Claim 22
As with claims 4 and 6 discussed above, we agree with Appellants
that the Examiner has failed to establish, by a preponderance of the
evidence, that Shiraishi discloses a fixing nut that is non-detachably
embedded in a resin part of a first sprocket. See Appeal Br. 13-15; Reply
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Br. 9. The rejection of claim 22 as being anticipated by Shiraishi is not
sustained.
Claim 20---Unpatentable Over Shiraishi and Nonoshita
The rejection of claim 20, which depends from claim 4, is not
sustained for the reasons presented above with respect to claim 4.
Claim 21-Unpatentable Over Shiraishi and Yamanka
The rejection of claim 21, which depends from claim 6, is not
sustained for the reasons presented above with respect to claim 6.
Claims 24 and 25-Unpatentable Over Shiraishi
The rejection of claims 24 and 25, which depend from claim 22, is not
sustained for the reasons presented above with respect to claim 22.
DECISION
The rejection of claims 1-3 and 5 under 35 U.S.C. § 102(b) as being
anticipated by Shiraishi is affirmed.
Because our reasons for affirming the rejection as to claims 1-3 and 5
might be seen as differing to some extent from those presented by the
Examiner, it might be considered that Appellants have not had a fair
opportunity to react to the thrust of the rejection as it presently stands. In re
Kronig, 539 F.2d 1300, 1302---03(CCPA1976); see also In re Kumar, 418
F.3d 1361, 1368 (Fed. Cir. 2005). As such, we designate our affirmance of
the rejection of claims 1-3 and 5 as a new ground of rejection pursuant to 37
C.F.R. §41.50(b).
The rejection of claims 4, 6, 19, 22, and 23 under 35 U.S.C. § 102(b)
as being anticipated by Shiraishi is reversed.
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The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Shiraishi in view ofNonoshita is reversed.
The rejection of claim 21under35 U.S.C. § 103(a) as being
unpatentable over Shiraishi in view of Y amanka is reversed.
The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Shiraishi is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding
upon the examiner unless an amendment or new Evidence
not previously of Record is made which, in the opinion of
the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
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new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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