Ex Parte Caiazzo

Patent Trial and Appeal Board

Mar 17, 2017

12020279 (P.T.A.B. Mar. 17, 2017)

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.
12/020,279 01/25/2008 Marco Caiazzo CAM3-PT137 1592
3624 7590 03/21/2017
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
NGUYEN, XU AN LAN T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO CAIAZZO
Appeal 2014-009713
Application 12/020,279
Technology Center 3600
Before JILL D. HILL, JAMES J. MAYBERRY, and SEAN P. O’HANLON,
Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marco Caiazzo (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s May 24, 2013 final decision rejecting claims 1—3, 5, 8, 9, 11, 12,
and 34—39.2 An oral hearing in accordance with 37 C.F.R. § 41.47 was held
on February 23, 2015. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Campagnolo S.r.l.
App. Br. 4.
2 Claims 4, 6, 7, 10, 13—33, and 40 are canceled. Id. at 6.
Appeal 2014-009713
Application 12/020,279
SUMMARY OF INVENTION
Appellant’s claimed invention “relates to a bicycle brake.” Spec. 1 5.
Claim 1, reproduced below from page 29 (Claims Appendix) of the Appeal
Brief, is illustrative of the claimed subject matter:
1. Bicycle brake comprising:
(i) a first lever having a pivoting area, an actuation arm
extending from the pivoting area to an area configured for
connecting to an inner cable of a brake cable, and a braking arm
extending from the pivoting area to an area configured for
supporting a brake pad; and
(ii) a second lever having an actuation arm for connecting
to a sheath of the brake cable and a braking arm for supporting
a brake pad;
wherein the actuation arm of the first lever between the
pivoting area and the area configured for connecting to the
inner cable of the brake cable is comprised essentially of distal
and proximal branches that extend from the pivoting area to the
area configured for connecting to the inner cable of the brake
cable.
REJECTIONS
Claims 1—3, 5, 8, 9, and 34—39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over JP ’686 (JP 61-147686, pub. Sept. 11,
1986) and Yoshigai (US 5,082,092, iss. Jan. 21, 1992).
Claims 1,11, and 12 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Mercat (EP 0965518, pub. Dec. 22, 1999) and Yoshigai.
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Application 12/020,279
ANALYSIS
Rejection Based on JP ’686 and Yoshigai
Claims 1, 5, 9, and 34—36
Appellant argues claims 1, 5, 9, and 34—36 together. App. Br. 14—27.
We select claim 1 as representative, treating claims 5, 9, and 34—36 as
standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that JP ’686 discloses a pivot-type bicycle brake
substantially as defined in independent claim 1, including a first lever 1
having an actuation arm, but does not disclose the first lever actuation arm
being comprised essentially of distal and proximal branches. Final Act. 2, 7.
The Examiner finds that Yoshigai discloses a cantilever-type bicycle brake
that evidences the “common practice in the art of bicycle brake[s] to have an
actuation arm 4' with one branch as shown in figure 3 or to have an actuation
arm 4 with two branches as shown in figure 1 as alternative designs.” Id.
at 2. The Examiner reasons that it would have been obvious to an artisan of
ordinary skill to modify the first lever actuation arm of JP ’686 to “comprise
two branches as taught by Yoshigai as an alternative design to a one branch
actuation arm.” Id. at 3. The Examiner further reasons that “[t]he advantage
of having two branched arm[s] would be weight reduction without
sacrificing strength.” Id. at 8. The Examiner notes that “[t]his reason is the
same as Appellant’s reason, as stated in Appellant’s [Specification.” Ans. 6
(citing Spec. 129).
Appellant traverses, arguing first “[njeither [JP ’686] nor Yoshigai
teaches or suggests improving the stress distribution in a single-pivot or
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Application 12/020,279
dual-pivot bicycle brake through a branched actuation arm of the first lever.”
App. Br. 21 (emphasis omitted). Continuing, Appellant alleges error
because “[w]hat the examiner regards as an actuation arm in Yoshigai, i.e.
the two-branched portion (4) from the brake pad (6) to the cable connection
(7), is not an actuation arm because it does not end at a pivot.” App. Br. 21—
22.
We are not persuaded by Appellant’s arguments. Rather than relying
on one of the cited references as teaching a branched first lever actuation
arm in a single-pivot or dual-pivot bicycle brake, the Examiner relied on the
combination of JP ’686 and Yoshigai to teach this feature. Final Act. 2—3.
Appellant’s arguments are not directed to the rejection as set forth by the
Examiner, and, thus, fail to apprise us of error.
Furthermore, during the oral hearing, Appellant conceded that the
Examiner’s modification of JP ’686 to include a branched first lever
actuation arm would result in one branch being in compression and the other
branch being in tension during use. Tr. 2:22—3:3. Therefore, we understand
that this argument has been waived.
Appellant also argues that “[t]he [Ejxaminer draws a generic teaching
from Yoshigai that is not in the reference. Although Yoshigai shows, in
[F]ig. 1, a portion of the brake lever comprises two branches, it is totally
silent on the purpose of this feature or any significance attributable to it.”
App. Br. 22. Thus, according to Appellant, the Examiner’s rationale for
modifying the brake of JP ’686 is “made with the hindsight of the present
invention.” Id.', see also Reply Br. 11.
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Application 12/020,279
During the oral hearing, Appellant conceded that the Examiner’s
modification of JP ’686 to include a branched first lever actuation arm
would result in one branch being in compression and the other branch being
in tension during use. Tr. 2:22—3:3. Appellant further conceded that the
Examiner’s rationale of such modification—weight reduction (Final
Act. 8)—was accurate and that Appellant “do[es]n’t take exception to the
[EJxaminer’s position that the prior art, which has two branches, would also
have less metal and therefore would have some weight reduction.” Id. at
4:23—25. Therefore, we understand that this argument has been waived.
Appellant also argues that “one of ordinary skill in the art would not
look to the centrally pulled cantilever brake lever of Yoshigai to modify the
side-pull caliper brake lever of [JP ’686]” because of “the significant[]
differences in stress concentrations and forces experienced by these two
distinct classes of levers.” App. Br. 22 (emphasis omitted). Continuing,
Appellant asserts that “the Examiner’s proposed combination clearly
requires a change in the operating principle of either [JP ’686] or Yoshigai.”
Id.
We are not persuaded by these arguments. The Examiner proposes to
modify the first lever actuation arm of JP ’686 to have the branched
configuration illustrated in Yoshigai Figure 1. Final Act. 2—3. The brake of
JP ’686 would operate in the same manner, so there is no change in its
operating principle.
Furthermore, even assuming arguendo that the stress concentrations
experienced by the brake levers of Yoshigai and JP ’686 are significantly
different, Appellant has not persuasively explained why such a difference
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Application 12/020,279
would prevent an artisan of ordinary skill from applying teachings regarding
Yoshigai’s lever to the lever of JP ’686. Moreover, as noted above,
Appellant conceded during the oral hearing that, as set forth by the
Examiner, modifying JP ’686 to have a lever with two branches, such as that
illustrated in Yoshigai, would result in weight reduction. Tr. 2:22—3:3,
4:23—25. Appellant has failed to apprise us of error.
Finally, Appellant argues that “the combination [of JP ’686 and
Yoshigai does] not render claim[] 1 . . . obvious since the ‘branched’ portion
of Yoshigai’s brake arm 4 only extends between the actuation end 7 and the
brake shoe 6,” and claim 1 “recite[s] a branched actuation arm of the first
lever that extends from the pivoting area to the area configured for
connecting to an inner cable of a brake cable.” App. Br. 26 (emphasis
omitted). Continuing, Appellant argues that “the forces exerted on
Yoshigai's ‘branched’ portion by the centrally pulled, straddle cable are
necessarily different from the forces exerted on Appellant’s distal and
proximal branches,” because “[i]n Appellant[’s] brake the compressive
stress is in the upper arm and the tensile stress is in the lower arm; in
Yoshigai there is a bending stress of the levers.” Id.
We are not persuaded by these arguments. The Examiner does not
suggest replacement of the first lever arm of JP ’686 with Yoshigai’s lever
arm; rather, the Examiner proposes to modify the first lever actuation arm of
JP ’686 to have the branched configuration illustrated in Yoshigai Figure 1.
Final Act. 2—3. Appellant’s arguments are not directed to the rejection as set
forth by the Examiner, and, thus, fail to apprise us of error.
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Furthermore, during the oral hearing, Appellant conceded that the
Examiner’s modification of JP ’686 to include a branched first lever
actuation arm would result in one branch being in compression and the other
branch being in tension during use. Tr. 2:22—3:3. Therefore, we understand
that this argument has been waived.
Accordingly, we sustain the rejection of claim 1, as well as of claims
5, 9, and 34—36 that fall with claim 1, as being unpatentable over JP ’686
and Yoshigai.
Claims 2, 3, 8, 37, and 38
Claim 37 depends directly from claim 1 and further requires “wherein
the second lever comprises a reinforcing beam extending between the
actuation arm and the braking arm.” App. Br. 32 (Claims Appendix).
Claims 38 depends directly from claim 37, and claim 8 depends directly
from claim 38; both of these claims further define the reinforcing beam. Id.
at 30, 32 (Claims Appendix).
The Examiner finds that JP ’686 discloses a second lever with a
reinforcing beam as recited in claims 37, 38, and 8. Final Act. 3.
Appellant acknowledges that “[t]he second lever 2 of [JP ’686]
has ... a reinforcing beam that extends from a point at the middle of the
actuation arm to a point intermediate the braking arm,” but argues that “[JP
’686] does not have a branched arm.” App. Br. 27 (emphasis omitted).
We are not persuaded by this argument. There is no requirement in
any of claims 37, 38, or 8 that the second lever have a branched arm. App.
Br. 30, 32 (Claims Appendix). Nor do claims 2 or 3 require the second lever
to have a branched arm. Id. at 29 (Claims Appendix). Appellant’s argument
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is not directed to any claim limitation, and thus does not persuade us of
error. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). To the extent
Appellant’s argument is directed to the first lever, it is unpersuasive for the
reasons set forth above.
Accordingly, we sustain the rejection of claims 2, 3, 8, 37, and 38, as
being unpatentable over JP ’686 and Yoshigai.
Rejection Based on Mercat and Yoshigai
The Examiner finds that Mercat discloses a bicycle brake substantially
as defined in independent claim 1, including a first lever 14 having an
actuation arm, but does not disclose the first lever actuation arm being
comprised essentially of distal and proximal branches. Final Act. 5. The
Examiner relies on Yoshigai to teach the use of a branched actuation arm,
relying on similar reasoning as with claim 1. Id. at 5—6.
Appellant traverses, presenting arguments similar to those presented
with respect to claim 1. App. Br. 23—27. These arguments are unpersuasive
for the reasons set forth above.
Accordingly, we sustain the rejection of claims 1,11, and 12 over
Mercat and Yoshigai.
Additional Arguments Presented During Oral Hearing
Appellant presented additional arguments during the oral hearings.
For example, Appellant argued that Mercat does not disclose how the brake
levers are connected to the sheath and wire of the brake cable. Tr. 3:8—25.
Such arguments, however, were not included in the Appeal Brief or the
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Reply Brief, and, therefore, are not properly before us on appeal. See 37
C.F.R. §41.47(e)(1).
DECISION
The Examiner’s decision to reject claims 1—3, 5, 8, 9, 11, 12, and 34—
39 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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