Shimano Inc.

Patent Trials and Appeals Board

Oct 1, 2020

2019006235 (P.T.A.B. Oct. 1, 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. 14/644,855 03/11/2015 Toshio Tetsuka SIC-11-018-2 6602 29863 7590 10/01/2020 DELAND LAW OFFICE P.O. BOX 69 KLAMATH RIVER, CA 96050-0069 EXAMINER STORMER, RUSSELL D ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 10/01/2020 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): bdeland1992@gmail.com jdeland@sisqtel.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOSHIO TETSUKA ____________ Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 Technology Center 3900 ____________ Before ALLEN R. MacDONALD, ERIC B. CHEN, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellant1 requests rehearing of our Decision dated January 17, 2020 (“Decision”), in which we affirmed the Examiner’s decision to reject claims 1, 3, 5, 6, 9-20, 22-25, 28-32 and 34- 42 under 35 U.S.C. § 103 as unpatentable over the cited prior art.2 Request for Rehearing, dated February 18, 2020 (“Request”). We have reconsidered the Decision in light of Appellant’s Request and, for the reasons noted 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Shimano, Inc. Appeal Br. 1. 2 We note that Appellant only requests rehearing on claims 1, 9, and 10. Thus, we do not reconsider our Decision on claims 3, 5, 6, 11-20, 22-25, 28-32 and 34-42. We also note that, in the Decision, we reversed the rejection of the Specification and the rejection of claim 8. Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 2 below, we decline to modify our Decision. Appellant argues that the Decision overlooks Appellant’s arguments regarding Phillips and Videon. Request 1-2. In particular, Appellant explains that the Appeal Brief expressly addresses Phillips and Videon (see Appeal Br. 12-13), but focuses on Longman because the Examiner finds “Longman taught the recited electrical connector that remains at the crank arm when the measurement board is absent from the crank arm. . . .” Request 2. Appellant additionally argues that the Decision overlooks “the fact that the claims require ‘the electrical connector remains at the crank arm when the measurement board is absent from the crank arm’. . . not when some arbitrary second electrical connector is removed from the crank arm.” Request 3 (emphasis omitted). Finally, Appellant argues that the Examiner fails to perform the required motivation analysis to support the combination of Phillips and Videon with Longman. Request 3-4. Appellant’s arguments fail to persuasively identify any points that the Board has misapprehended or overlooked or identify error in the Decision. As discussed in the Decision, Appellant challenges the teaching of each cited prior art individually, but does not address the combination as set forth by the Examiner. See, e.g., Decision 9. For example, the Final Rejection does not find Longman alone teaches detachable connectors where the electrical connector remains at the crank arm when the measurement board is absent from the crank arm. Instead, the Examiner explains “[a]t least some of the sockets, jacks, and plug taught by Longman would remain with the cranks arm when the measurement board of Phillips is absent.” Ans. 14 (emphasis added). See also Final Act. 8 (combining Phillips and Videon to Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 3 teach the claimed detachably mounted measurement board). In other words, the Examiner only relies on Longman as teaching detachable electrical connectors generally, where one of the connectors remain with the device when the corresponding connector is detached or removed. See Final Act. 9 (“[Longman’s] apparatus may include electrical wiring and electrical connectors configured to detachably connect to other electrical connectors.”); Longman p. 18, l. 22-p. 19, l. 4; (teaching electrical connections between the device and the detachable charging means); Ans. 16 (“The explanation on page 20 [of the Final Action] merely points out that by using sockets, plugs, and jacks, Longman teaches that one electrical connector [of the device] can remain at the crank arm when a second electrical connector [of the charging means] is removed.”). The Examiner combines Longman’s detachable electrical connectors with the detachably mounted measurement board of Phillips in view of Videon to arrive at the claimed invention. Final Act. 8-9. As such, we are not persuaded the Decision overlooks arguments with respect to Philips and Videon or overlooks the disputed claim limitation of “the electrical connector remains at the crank arm when the measurement board is absent from the crank arm.” Appellant’s final argument, that the Examiner fails to perform the required motivation analysis and provide sufficient support for the cited combination, is presented for the first time in the Request. See, e.g., Appeal Br. 17 (concluding only that the three prior art references fails to teach the disputed limitation without challenging the Examiner’s reasons to combine); Appeal Br. 13-17 (arguing only that none of Phillips, Videon, or Longman Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 4 teach the disputed limitation). Appellant, therefore, fails to persuasively identify how the Decision misapprehends or overlooks this argument. See also MPEP § 1214.03(a)(1)(“Arguments not raised, and Evidence not previously relied upon. . . are not permitted in the request for rehearing”3); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision)( “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.”). Moreover, Appellant’s argument only generally asserts the Examiner’s reasoning is insufficient without persuasive explanation or support. See, e.g., Request 3-4 (asserting generally the reasons to combine the cited prior art is insufficient but failing to explain why the reasons provided by the Examiner are insufficient). As such, based on the record before us, Appellant’s arguments are unpersuasive. CONCLUSION While we have considered the arguments raised by Appellant in the Request, we find them not persuasive to identify error in the original Decision. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting claim 1, 9, and 10. 3 We note that MPEP § 1214.03(a)(2)-(4) identify exceptions when a new argument is permitted, however, those exceptions are not applicable here. Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 5 Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 10 103 Phillips, Videon, Longman 1, 10 9 103 Phillips, Videon, Longman, Meyer 9 Overall Outcome 1, 9, 10 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. §/ 37 C.F.R. Reference(s)/ Basis Affirmed Reversed Drawings/ Specification Objection - 37 C.F.R. 1.75(d)(1) Drawings/ Specification 3, 5, 6, 14, 15, 22, 36, 38 112, first (pre-AIA) 3, 5, 6, 14, 15, 22, 36, 38 1, 3, 5, 6, 8, 10-20, 22- 25, 28-32, 34-42 103 Phillips, Videon, Longman 1, 3, 5, 6, 10-20, 22- 25, 28-32, 34-42 8 9 103 Phillips, Videon, Longman, Meyer 9 Overall Outcome 1, 3, 5, 6, 9-20, 22- 25, 28-32, 34-42 8 Appeal 2019-006235 Reissue Application 14/644,855 Patent 8,833,182 6 TIME PERIOD FOR RESPONSE 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). DENIED