SHIMANO INC.

Patent Trials and Appeals Board

Feb 26, 2020

14878207 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/878,207 10/08/2015 Kentaro KOSAKA SN-US156542 3421
22919 7590 02/26/2020
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
DIAZ, THOMAS C
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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 KENTARO KOSAKA, KAZUNORI OOKUBO, and
YOSHIMITSU MIKI

Appeal 2018-005502
Application 14/878,207
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was conducted on January 16, 2020, with
David Vaughn appearing on behalf of Appellant.
We AFFIRM, and designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Shimano Inc.
Appeal Br. 4.
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Application 14/878,207

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a bicycle operating device. Claim 1 is
illustrative, and is reproduced below:
1. A bicycle operating device comprising:

a support structure;

a first release member movably supported on the support
structure between a first non-releasing position and a first
releasing position;

a second release member movably supported on the support
structure between a second non-releasing position and a second
releasing position; and

a select member movably supported on the support structure
between at least a first select position and a second select
position, the select member permitting movement of the first
release member and preventing movement of the second release
member while the select member is in the first select position,
and the select member permitting movement of the second
release member and preventing movement of the first release
member while the select member is in the second select position.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–20 under 35 U.S.C. § 112(a), as failing to comply with
the written description requirement;
(ii) claims 1–20 under 35 U.S.C. § 112(b), as being indefinite; and
(iii) claims 1–3 and 8–11 under 35 U.S.C. § 102(a)(1) as being
anticipated by Miki (US 8,746,106 B2, issued June 10, 2014).

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ANALYSIS
Claims 1–20--35 U.S.C. § 112(a)--Written Description
The Examiner takes the position that the claims fail to recite particular
structure that accomplishes the functions and results set forth in the claims,
and that the Specification does not provide adequate support for the claims.
Final Act. 3. The Examiner additionally notes that “[i]t is not solely the
‘selector member’” that makes possible the functions recited, “but rather the
combination thereof [and] the particular interconnections thereof with other
elements which allow this functionality.” Id.
Appellant argues that claim 1 has never been amended, and thus forms
part of the original disclosure. Appeal Br. 11. Appellant further maintains
that the Specification includes a detailed disclosure as to the functioning of
the “select member” at issue, and that, because the mechanical arts are
predictable and the particular field of the present invention is mature, “a
single embodiment is sufficient to show that the inventors possessed the
currently claimed bicycle operating device.” Id. at 11–12.
Appellant is correct, in general, that in mature, predictable arts, the
disclosure of a single embodiment may well be sufficient to provide written
descriptive support for a claim encompassing that embodiment. However,
the Examiner was on the right track in observing, as set forth above, that it is
the interconnection(s) and interaction(s) of the claimed “select member”
with other components that dictate the functionality of the select member.
Final Act. 3. Indeed, we do not find in the disclosure of the functioning of
the claimed “select member” any description as to how the select member
operates to “prevent[] movement of the second release member while the
select member is in the first select position,” nor to “prevent[] movement of
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the first release member while the select member is in the second select
position,” as set forth in all claims on appeal.
We appreciate and understand the disclosure presented in the excerpts
from the Specification appearing in the Appeal Brief, which Appellant avers
describe in detail “the functions and structures of select member 67.”
Appeal Br. 11–12. That discussion explains how select member 67 operates
to allow engagement one or the other of the first and second release
members, depending upon the select member being in one or the other of the
first and second release positions. Id. A disclosure of allowing engagement
of only one of the release members at a time to move the engaged release
member does not, however, describe in any manner how the non-engaged
release member is prevented from being moved, which is a function recited
in the claims as being performed by the select member. Neither the
Specification nor the claims include any explanation as to how the select
member operates to prevent movement of the non-engaged release member.
As such, the Specification lacks evidence that Appellant was in possession
of a device having a select member that performs this function.
We are cognizant that Appellant may have intended that the claimed
function of “preventing movement” was to mean something along the lines
of “not engaging so as to not effectuate movement,” which appears to be
consistent with the operation of the device and select member as disclosed in
the Specification. However, in claims such as those on appeal, which rely
almost solely on functional recitations involving highly-generically recited
structural components, with little to no recitation of the relative positions
and interactions among the recited components, an accurate recitation as to
the functions that are actually performed is essential.
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Accordingly, we find that the “preventing movement” language
attributed to the select member in all of the claims lacks adequate written
descriptive support under 35 U.S.C. § 112(a). The rejection of claims 1–20
on this basis is sustained. Because our reasons for affirming differ to some
extent from those presented by the Examiner, it might be considered that
Appellant has 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 (CCPA 1976);
see also In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005). As such, we
designate our affirmance of the rejection as a new ground of rejection
pursuant to 37 C.F.R. §41.50(b).

Claims 1–20--35 U.S.C. § 112(b)--Indefiniteness
The Examiner’s position appears to be that claims 1–20 are indefinite
in that it is unclear whether the limitation(s) involving the recited “select
member” should or should not be treated as invoking 35 U.S.C. § 112(f) and
interpreted as a “means plus function” limitation. Final Act. 4–5; Ans. 13–
14. The Examiner asserts that, even after proper analysis of the claim
language is performed, the result of the analysis is inconclusive. Ans. 13–14
(citing Form Paragraph 7.34.24).
We do not find the Examiner’s analysis to be sufficiently clear and
focused in determining how the claimed “select member” should be
construed. The Examiner treats the term as not invoking § 112(f), and sees
fit to apply the cited prior art accordingly. The indefiniteness rejection is
therefore not sustained.

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Claims 1–3 and 8–11--35 U.S.C. § 102(a)(1)--Miki
The Examiner finds that Miki discloses a select member (element 90)
that functions in the manner claimed, based on a first select position
characterized by spring 110 being compressed, and a second select position
characterized by spring 110 being uncompressed. Final Act. 6. Appellant
maintains that “there is no correlation between the compression state of the
biasing element 110” and “whether or not the pulling pawl 54a and the
release pawl 56a are permitted to move.” Appeal Br. 23.
Ultimately, it appears that, although first and second release members
in the form of pawls 54a and 56a are movable or moved in certain positions
of the bicycle operating device of Miki, and not moved in other positions,
the Examiner has not adequately shown that spring/biasing element 110
being in compressed and uncompressed positions is responsible for effecting
the different movement functions.
Accordingly, we do not sustain the rejection of claims 1–3 and 8–11
as being anticipated by Miki.

DECISION
The rejection of claims 1–20 under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement, is affirmed, with the
affirmance designated as a New Ground of Rejection under 37 C.F.R.
§ 41.50(b).
The rejection of claims 1–20 under 35 U.S.C. § 112(b), as being
indefinite, is reversed.
The rejection of claims 1–3 and 8–11 under 35 U.S.C. § 102(a)(1) as
being anticipated by Miki is reversed.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–20 § 112(a) Written
description
1–20 (new ground)
1–20 § 112(b) Indefiniteness 1–20
1–3, 8–
11
§ 102(a)(1) Miki 1–3, 8–11
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that 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:
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(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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. §41.50(b)