Ex Parte CLEMENT

Patent Trial and Appeal BoardAug 21, 2018

14051422 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/051,422 10/10/2013 23581 7590 08/23/2018 KOLISCH HARTWELL, P.C. 200 PACIFIC BUILDING 520 SW YAMHILL STREET PORTLAND, OR 97204 FIRST NAMED INVENTOR Adam John CLEMENT 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. CET.301CIP 4155 EXAMINER JOHNSON, VICKY A ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): docketing@khpatent.com veronica@khpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM JOHN CLEMENT Appeal2017-010433 1 Application 14/051,422 Technology Center 3600 Before WILLIAM A. CAPP, NATHAN A. ENGELS, and ARTHUR M. PESLAK, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 The Application identifies Gevenalle LLC as the Applicant. Appellant identifies Gevenalle LLC as the real party in interest. Appeal Br. iv. Appeal2017-010433 Application 14/051,422 THE INVENTION Appellant's invention relates to bicycle brake and gear shift controllers. Spec. 2. Claim 1, reproduced below with paragraph indentations added, is illustrative of the subject matter on appeal. 1. A control device for mounting on a bicycle handlebar, the control device comprising: a rotatable brake lever adapted to be attached to a drop-style handlebar of a bicycle and defining a first axis of rotation, wherein rotation of the brake lever about the first axis of rotation is configured to move an elongate control portion of the brake lever generally toward and away from the handlebar within a brake lever plane; wherein the control portion of the brake lever defines a proximal side generally closer to the handlebar and a distal side generally further from the handlebar; and a rotatable shift lever adapted to be operatively connected to the brake lever and disposed on the distal side of the control portion of the brake lever, the shift lever defining a second axis of rotation substantially perpendicular to the first axis of rotation, and wherein the shift lever may be rotated by hand through a plurality of operating positions without movement of the brake lever; wherein each operating position of the shift lever corresponds to a gear of the bicycle, and wherein the shift lever is configured to be rotated in a first direction to cause a shift into a smaller gear, and to be rotated in a second direction to cause a shift into a larger gear; and wherein the shift lever is configured to be mechanically held in a selected one of the operating positions after being rotated. comprising. 2 Appeal2017-010433 Application 14/051,422 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Nagano Fujii us 5,241,878 US 7,565,848 B2 Sept. 7, 1993 July 28, 2009 The following rejections are before us for review: 1. Claims 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. 2. Claims 1-5 and 7-12 are rejected under 35 U.S.C. Â§ 102(a)(l) as being anticipated by Fujii. 3. Claims 1-20 are rejected under 35 U.S.C. Â§ 103, as being unpatentable over Nagano. OPINION Section 112 Indefiniteness Claim 1 The Examiner considers claim 1 to be indefinite because it is purportedly directed to a mixture of apparatus and method limitations. Final Action 3 (citing MPEP Â§ 2173.05(p)(ii)). The preamble of claim 1 indicates that it is an apparatus claim. Claims App. The Examiner considers the following limitation of claim 1 as directed to a method of using the device. the shift lever is configured to be rotated in a first direction to cause a shift into a smaller gear, and to be rotated in a second direction to cause a shift into a larger gear; and wherein the shift lever is configured to be mechanically held in a selected one of the operating positions after being rotated, Final Action 3, Claims App. claim 1. 3 Appeal2017-010433 Application 14/051,422 In response, Appellant argues that the limitation at issue is a functional limitation of an apparatus claim. Appeal Br. 3. Appellant cites In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) for the proposition that an apparatus may be claimed either structurally or functionally. Appellant emphasizes that "reciting how a claimed apparatus functions is not the same as reciting a user carrying out those functions." Appeal Br. 4. In response, the Examiner takes the position that the claim requires method step actions to be taken by a user. Ans. 3. "Mechanically held' is not what makes the claim indefinite it is 'after being rotated.' The rotation is done by the user, when the device is being used." Id. In the case of IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), the Federal Circuit held that a claim reciting both a system and the method for using the system is indefinite, as it does not apprise a person of ordinary skill in the art of its scope. Id. at 1384. In IPXL, the Federal Circuit maintained that it is unclear whether infringement of the claim occurs when one creates the system or whether infringement occurs when the user actually uses the system. Id. However, that is not the case here. Appellant is correct in observing that a patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210,212 (CCPA 1971) (there is nothing intrinsically wrong with defining something by what it does rather than what it is). We agree with Appellant that the claim language at issue is a properly recited functional limitation of an apparatus claim. In other words, it recites what the structure is capable of doing. It does not, however, require an act to actually be performed by a user in order to practice the invention. 4 Appeal2017-010433 Application 14/051,422 Consequently, we do not sustain the Examiner's Section 112 indefiniteness rejection of claim 1. Claims 2 and 5 The Examiner also considers claims 2 and 5 to recite methods of using a device in an apparatus claim. Final Action 3--4. We disagree with the Examiner's conclusion that claims 2 and 5 recite method steps for substantially the same reasons discussed above with respect to the indefiniteness rejection of claim 1. Accordingly, we do not sustain the Examiner's Section 112 indefiniteness rejections of claims 2 and 5. Claims 3, 4, and 6 These claims are rejected solely on account of their dependence from claim 1. Accordingly, we do not sustain the Examiner's Section 112 indefiniteness rejection of claim 3, 4, and 6. Claim 7 The Examiner considers claim 7 indefinite because it is allegedly unclear which elements are required for the "means of operating." Final Action 4. In traversing the rejection, Appellant identifies the language in the Specification as disclosing corresponding structure for the claimed means. Appeal Br. 6 (citing Spec. 14:18-15:8). In response, the Examiner states that the Specification passage identified by Appellant in the Appeal Brief fails to explicitly recite that it is the claimed "means for operating." Ans. 3. The governing statute provides, in pertinent part, that: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 5 Appeal2017-010433 Application 14/051,422 35 U.S.C. Â§ 112(Â±). The statute merely requires that the Specification disclose structure that corresponds to the claimed means. Id. Here, Appellant properly identifies the corresponding structure to the claimed means. Appeal Br. 6. The Examiner errs in requiring that Appellant explicitly denote somewhere in the Specification that certain specified structure is the structure corresponding to the claimed means. We know of no such requirement, and the Examiner cites no competent legal authority to support such a position. Therefore, we do not sustain the Examiner's Section 112 indefiniteness rejection of claim 7. Claims 8-13 These claims are rejected solely on account of their dependence from claim 7. Accordingly, we do not sustain the Examiner's Section 112 indefiniteness rejection of claim 8-13. Anticipation of Claims 1-5 and 7-12 by Fujii Claims 1-5 The Examiner finds that Fujii discloses all of the elements of claim 1. Final Action 4--5. In particular, the Examiner finds that Fujii discloses a "shift lever" disposed on the distal side of the control portion of the brake lever as claimed. Id. Appellant argues that Fujii fails to disclose a shift lever as claimed. Appellant argues that Fujii, instead, discloses an electrical shift control switch, which is not a "lever." Appeal Br. 10. Appellant supports this position with references to the Specification and to on-line dictionary definitions of "lever." Id. 6 Appeal2017-010433 Application 14/051,422 The Examiner responds by identifying Fujii element 62 as corresponding to the rotatable shift lever of claim 1. Ans. 4. The Examiner takes the position that the meaning of "lever" does not require an elongated portion to provide a mechanical advantage. Id. at 5. The Examiner and Appellant differ over the meaning of the term "lever." During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence." In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is "'unreasonably broad" and does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Reading the claim language in light of Appellant's Specification, we think that a person of ordinary skill in the art would understand that a "lever" is a device that is capable of producing "leverage." This is ordinarily accomplished using a beam or rigid rod that pivots at a hinge or fulcrum. As correctly argued by Appellant, such a mechanism provides a mechanical advantage or "leverage." Appeal Br. 10. Fujii discloses a bicycle control device that includes a base member, an electrical shift control switch and a brake lever. Fujii, Abstract. Fujii 7 Appeal2017-010433 Application 14/051,422 explicitly describes the brake control as a "lever" that is pivotally attached to the base member. Id. However, when it comes to the shift control, Fujii uses the term "electrical shift control switch," but never the word "lever." Id. Using the term "lever" for the brake control, but not the gear shift control, is persuasive evidence that Fujii did not consider its gear control to comprise a "lever." The structure of Fujii's electrical shift control switch is depicted in Figures 6-11 and operation of the shift control switch is described in column 5, line 54 through column 6, line 62. Id. at 2:45---67, 5:54---6:62. Based on the drawings and accompanying description, a person of ordinary skill in the art would understand the structure and operation of Fujii's electrical shift control switch as a rotating knob or "twist grip," not a "lever." Fuji, 2:40-44. To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). The Examiner's anticipation rejection relies on an overly broad construction of lever that is not grounded in the Specification. Using a proper construction of lever, Fujii fails to disclose the lever limitation of claim 1. Accordingly, we do not sustain the Examiner's anticipation rejection of claim 1, neither do we sustain the rejection of claims 2-5 that depend therefrom. Claims 7-12 Claim 7 is an independent claim that contains a rotatable shift lever limitation that is substantially similar to the one at issue in claim 1. Claims App. In rejecting claim 7 as anticipated by Fujii, the Examiner commits the same error with respect to the meaning of "lever" that we discussed in 8 Appeal2017-010433 Application 14/051,422 connection with claim 1. Accordingly, we do not sustain the Examiner's anticipation rejection of claim 7, neither do we sustain the rejection of claims 8-12 that depend therefrom. Claim 1 Unpatentability of Claims 1-20 over Nagano The Examiner's rejection, among other things, is predicated on a finding of fact that Nagano discloses a shift lever that is configured to be mechanically held in a selected operating position. Final Action 7 (held in place by friction at each operating positon). Appellant traverses the Examiner's rejection by arguing, among other things, that Nagano fails to disclose a shift lever that is configured to be mechanically held in a selected operating positon after being rotated. Appeal Br. 14. Appellant contends that Nagano teaches that its gear shift control lever returns to its starting position after each shift and, therefore, does not remain in a selected operating position after being rotated by being mechanically held there. Id. at 16. Appellant contends that the Examiner's finding that Nagano's shift lever is held in place by friction in each operating position lacks evidentiary support. Id. The Examiner's Final Rejection fails to cite evidence in Nagano to support a vague and inexplicit finding that the gear shift is held in place by friction. Final Action 7. The Examiner's Answer does not address, or otherwise respond to, Appellant's Appeal Brief arguments concerning the gear shift lever being configured to be mechanically held in a selected operating position. See generally Answer. 9 Appeal2017-010433 Application 14/051,422 Nagano discloses a control device that attaches to the handlebar of a bicycle for controlling a brake mechanism and a gear shift ( change speed) mechanism. Nagano, Abstract. The brake mechanism is controlled by fore and aft pivotal movement of the brake lever. Id. Gear shift is controlled by sideways pivotal movement of the brake lever. Id. In other words, there is only one lever. The one lever pivots fore and aft for braking and sideways for shifting gears. Id. When the brake lever is pivoted sideways to shift gears, it returns to its original position upon release. Id. col. 1, 11. 55---61, col. 2, 11. 20-31. In contrast, Appellant claims a control device with two levers, not one lever as taught by Nagano. In Appellant's invention, the brake lever pivots toward and away from the handlebar within a brake lever plane. Appellant's shift lever, which is separate and distinct from the brake lever, is disposed on the distal side of the control portion of the brake lever. The shift lever rotates about a second axis of rotation that is substantially perpendicular to the axis of rotation of the brake lever. Id. The shift lever may be rotated without movement of the brake lever. The shift lever may be rotated through a plurality of operating positions. After the shift lever is rotated to a selected operating position, it is "mechanically held" in such operating position. Appellant's brief put the Examiner on notice that Appellant was challenging the Examiner's finding that Nagano satisfies that "mechanically held" limitation of claim 1. The Examiner offers nothing in response to this challenge. To be sustained, the Examiner's finding requires more than a conclusory statement and, instead, requires citation to "concrete evidence in the record." K/S Himpp v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). The Examiner provides no such "concrete evidence." 10 Appeal2017-010433 Application 14/051,422 Our own independent review of Nagano confirms a lack of evidentiary support for the Examiner's finding. Under the circumstances, we agree with Appellant that the Examiner's rejection is not supported by the record. Therefore, we do not sustain the Examiner's Section 103 rejection of claim 1 over Nagano. Claims 2-6 In view of our decision to reverse the Examiner's Section 103 rejection of claim 1 over Nagano, we also do not sustain the Section 103 rejections of claims 2-6 that depend therefrom. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (dependent claims are nonobvious if the independent claims from which they depend are nonobvious). Claim 7 Claim 7 is an independent claim that differs in scope from claim 1 primarily in that it contains a limitation directed to the shift lever including means for operating selectively in either an index mode or a friction mode. Claims App. The Examiner's Final Rejection fails to make any factual findings regarding whether Nagano includes means for operating selectively in either an index mode or a friction mode. See generally Final Action. Moreover, the Examiner makes no findings and provides no underlying analysis that tends to show that it would have been obvious to modify Nagano so that it could have operated selectively in either an index mode or a friction mode. Id. A proper obviousness analysis requires, among other things, ascertaining the differences between the prior art and the claimed invention. MPEP Â§ 2141(II)(B); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,400 11 Appeal2017-010433 Application 14/051,422 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). In the Final Rejection, the Examiner lumps all of the fact findings for twenty pending claims into a single paragraph. Final Action 7. Specific findings with respect to key claim limitations are altogether missing in this paragraph. Id. Particularly with respect to the index/friction mode limitation of claim 7, there is no citation to the record as to where this limitation is purportedly met by Nagano. Id. Having independently reviewed Nagano, we find no evidentiary support for a finding that Nagano teaches any means to operatively select between an index mode and a friction mode. In short, the Examiner's findings of fact in the Final Rejection are inadequate to provide us with any basis for upholding the Examiner's obviousness determination. Hear-Wear, 751 F.3d at 1365. As the Examiner failed to cite adequate evidence in support of a key fact finding, we do not sustain the Examiner's Section 103 unpatentability rejection of claim 7 over Nagano. Claims 8-13 In view of our decision to reverse the Examiner's Section 103 rejection of claim 7 over Nagano, we also do not sustain the Section 103 rejections of claims 8-13 that depend therefrom. Fritch, 972 F.2d at 1266. Claim 14 Claim 14 is an independent claim that differs in scope from claim 1 primarily in that it contains a limitation directed to the shift lever being held in place by friction at each operating position. Claims App. As with the rejection of claim 7 discussed above, the Examiner's Final Rejection fails to make any factual findings regarding whether Nagano discloses holding the shift lever in place at each operating position, whether by friction or 12 Appeal2017-010433 Application 14/051,422 otherwise. Indeed, rather than being held in place at each operating position, Nagano discloses lever spring 20 for returning the lever to its starting position after each gear shift. Nagano, col. 4, 11. 7-10. As with the rejection of claim 7, our independent review of Nagano reveals no evidentiary support for a finding that Nagano teaches holding the shift lever in place at each operating position. The Examiner's rejection is not supported by the record and, therefore, we do not sustain the Examiner's Section 103 unpatentability rejection of claim 14 over Nagano. Hear-Wear, 751 F.3d at 1365. Claims 15-20 In view of our decision to reverse the Examiner's Section 103 rejection of claim 14 over Nagano, we also do not sustain the Section 103 rejections of claims 15-20 that depend therefrom. Fritch, 972 F.2d at 1266. DECISION The decision of the Examiner to reject claims 1-13 under Section 112 as indefinite is reversed. The decision of the Examiner to reject claims 1-5 and 7-12 under Section 102 as anticipated by Fujii is reversed. The decision of the Examiner to reject claims 1-20 under Section 103 as unpatentable over Nagano is reversed. REVERSED 13