Ex Parte Fukao et al

Patent Trial and Appeal BoardApr 30, 2018

13159451 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/159,451 06/14/2011 22919 7590 05/02/2018 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 FIRST NAMED INVENTOR Kazutaka FUKAO 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-US115105 1503 EXAMINER MCGOVERN, BRIAN J ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 05/02/2018 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): mailpto@giplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUT AKA FUKAO and YOSHIMITSU MIKI Appeal2016-004076 1 Application 13/159,451 Technology Center 3600 Before LINDA E. HORNER, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kazutaka Fukao et al. ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Oral argument was heard for this case on April 24, 2018. We REVERSE. 1 Appellants identify Shimano, Inc. as the real party in interest. App. Br. 3. Appeal 2016-00407 6 Application 13/159,451 BACKGROUND Sole independent claim 1, reproduced below, represents the claimed invention. Disputed limitations are italicized for emphasis. 1. A bicycle shift operating device comprising: a base member including a first end with a bicycle mounting structure, a second end spaced from the first end and a top surface extending between the first end and the second endÂ· ' a shift unit disposed in the base member between the first end and the second end; a first operating lever pivotally mounted relative to the base member about a first pivot axis, and pivotally mounted relative to the base member about a second pivot axis; and a connecting member operatively connecting the shift unit to the first operating lever, the connecting member including a lever contact portion that contacts the first operating lever to transmit movement of the first operating lever to the connecting member in response to pivotal movement of the first operating lever about the second pivot axis, the connecting member being arranged such that the lever contact portion passes into a space provided between the first pivot axis and the first operating lever from a top surface side of the base member with respect to the first pivot axis, the lever contact portion partially extending toward the second end of the base member relative to the first pivot axis from a position that is between the top surface side and the first pivot axis and that is between the second end of the base member and the first pivot axis. 2 Appeal 2016-00407 6 Application 13/159,451 REJECTIONS 2 I. Claims 1--4 and 6-15 stand rejected under pre-AIA 35 U.S.C. Â§ 102(b) as anticipated by Sato (US 2004/0144193 Al, pub. July 29, 2004) ("Sato '193). Final Act. 8. II. Claims 1-15 stand rejected under pre-AIA 35 U.S.C. Â§ 102(b) as anticipated by Sato (US 2008/0295636 Al, pub. Dec. 4, 2008) ("Sato '636). Final Act. 13. ANALYSIS Rejection I-Sato '193 The Examiner finds that Sato '193 discloses, inter alia, a connecting member 202 connecting a shift unit to a first operating lever 18, the connecting member 202 including a lever contact portion 214 that: ( 1) contacts the first operating lever 18; (2) passes into a space provided between a first pivot axis (about pivot shaft 54) and the first operating lever from a top surface side of the base member with respect to the first pivot axis; and (3) extends toward a second end (the end from which the first operating lever 18 extends) of the base member relative to the first pivot axis at 54 from a position that is between the top surface side and the first pivot axis at 54, and that is between the second end of the base member and the first pivot axis at 54. Final Act. 9-10 (citing Sato '193, Fig. 3). The Examiner defines the portion of the connecting member considered to be the lever contact portion in the following annotation of a portion of Figure 3 of Sato '193. 2 The Examiner has withdrawn the indefiniteness rejection. Final Act. 2; Ans. 2. 3 Appeal 2016-00407 6 Application 13/159,451 See Final Act. 10. This annotated figure shows drive plate 202 of Figure 3 with a line drawn by the Examiner just below opening 198. The Examiner identified the portion of drive plate 202 that lies below the line as the lever contact portion (LCP). Appellants argue that the Examiner erred in finding that Sato '193 discloses its lever contact portion passing into a space provided between the first pivot axis at 54 and the first operating lever 18 from a top surface side of the base member 14 with respect to the first pivot axis at 54. See Appeal Br. 10-11. Appellants provide the following annotated version of their own Figure 8 to define the space provided between the first pivot axis and the first operating lever from a top surface side of the base member with respect to the first pivot axis: 4 Appeal 2016-00407 6 Application 13/159,451 ... Â·Â·., .. -.Â· .:._..;;~ Id. at 10. This annotated Figure 8 includes labels to show lever contact portion 56b of connecting member 56 extending toward the second end of the base member 27 from a position that is between the top surface side and the first pivot axis P 1. According to Appellants, the lever contact portion of Sato '193 designated in the Examiner's annotated version of Figure 3 does not pass through a space "between" as designated in their annotated Figure 8 above, or extend toward the second end of its base member 14 relative to the first pivot axis at 54 from a position that is between the top surface side and the first pivot axis at 54, and that is between the second end of the base member 14 and the first pivot axis at 54. Appeal Br. 11-12; Reply Br. 3--4. We are persuaded by Appellants' argument. A review of Sato '193 indicates that its lever contact portion, as designated in the Examiner's annotated version of Figure 3 above, would not extend toward the second end of the base member 14 relative to the first pivot axis at 54 from a position that is between the top surface side and the first pivot axis at 54, and that is between the second end of the base member 14 and the first pivot axis at 54. Rather, it appears that the lever contact portion 214 of Sato '193 5 Appeal 2016-00407 6 Application 13/159,451 extends toward the second end of the base member 14 from a position that is between a bottom surface thereof and the first pivot axis at 54. In other words, the claim recites the lever contact portion extending from a position over the pivot axis to contact the brake lever, whereas the lever contact portion 214 of Sato '193 appears to extend from a position under the pivot axis to contact the brake lever. For this reason, we do not sustain Rejection I. Rejection II-Sato '636 Based on a first interpretation of Sato '636, represented in an annotated version of a portion of Figure 6 of Sato '636 shown below, the Examiner finds that Sato '636 discloses, inter alia, a connecting member 40 connecting a shift unit to a first operating lever 41, the connecting member 40 including a lever contact portion (a portion of 71, 72 starting at "POS" in the annotated version of Figure 6 below) that: ( 1) contacts the first operating lever 41; (2) passes into a space provided between a first pivot axis BA3 and the first operating lever 41 from a top surface side (defined in the annotated version of Figure 6 below as TS) of the base member 36 with respect to the first pivot axis BA; and (3) extends toward a second end (defined in the annotated version of Figure 6 below as 2E) of the base member relative to the first pivot axis at BA from a position POS that is between the top surface side and the first pivot axis BA, and that is between the second end of the base member and the first pivot axis BA. Final Act. 13-14 (citing Sato '636 if 5 8, Fig. 6). 3 Figure 6 of Sato '636 identifies "BA" as the point at the center of pivot pin 45, shown immediately to the left of second portion 72 in the annotated Figure below. 6 Appeal 2016-00407 6 Application 13/159,451 Id. at 14. Annotated Figure 6 shows a horizontal dashed line through the position where lever contact portion extends toward the second end of the base member. Regarding this first interpretation, Appellants argue, inter alia, that the first and second portions 71, 72 of the hinge pin 73 of Sato '636 (which the Examiner finds to be the claimed connecting member lever contact portion) do not pass into a space provided between its first pivot axis BA and its first operating lever 41 from a top surface side TS of the base member 36 with respect to the first pivot axis BA. Appeal Br. 12-13 ("[N]either of [the first and second portions 71, 72] pass into a space provided between the first pivot axis and the first operating lever from a top surface side of the base member with respect to the first pivot axi[s].") (emphasis omitted); see also Reply Br. 5-7. We agree with Appellants that the first and second portions 71, 72 of the hinge pin 73 of Sato '63 6 do not pass into a space provided between its first pivot axis BA and its first operating lever 41 from a top surface side TS of the base member 36 with respect to the first pivot axis BA. In other words, we interpret "from a top surface side of the base member with respect to the first pivot axis" to require that the first and second portions 71, 72 7 Appeal 2016-00407 6 Application 13/159,451 pass into a space above first pivot axis BA, whereas the lever contact portion 71, 72 of Sato '63 6 extends under the pivot axis. Proffering a second interpretation of Sato '636, the Examiner provides an alternate annotated portion of Figure 6 of Sato '636 as shown below: " 1E 9' rÂ·~,. . ....... : .. ... (J/~& Â·- \ ~--~'. \ t / .. : ~:.- Â·Â·Â·.x~. SP // / ~,Â· Â« .. i"-ry~-:~~,/~ // ,. "SP>"Â·~-" / "'Â· .. ;~ .. :1Â· ::;.Pf~Â·~~ a ! ( '-<'~~~~> 'f' sp ..... \\::::::::/:;~~'.:>:.)>:~"< ;.$ Final Act. 19; Ans. 11. In the annotated drawing shown above, Figure 6 is rotated 90 degrees counterclockwise, and the Examiner identifies the surface from which the bicycle mounting structure 43 extends as the top surface. According to the Examiner, in this interpretation of Sato '636, the entirety of the lever contact portion 71, 72 is disposed between the first pivot axis BA and a second end 2E of the base member 3 6 along a direction parallel to a second axis SA. Id. at 18-19; Ans. 10-11. Appellants argue that this second interpretation is unreasonable, because the first end IE is not "a first end with a bicycle mounting structure" as recited in claim 1. Reply Br. 7. Rather, in the second interpretation the "bicycle mounting structure is disposed along the 'top surface' [TS] between the first and second ends." Id. We agree with Appellants that this second interpretation is unreasonable. The claim recites a top surface extending between a first end 8 Appeal 2016-00407 6 Application 13/159,451 and a second end and, in the second interpretation, the bicycle mounting structure 43 is disposed on the top surface TS rather than at either end IE, 2E thereof. It is unreasonable to find that the location of the bicycle mounting structure 43 of Sato '636, which is almost centrally located along top surface TS, is at an end of the base member. For the reasons explained above, we do not sustain Rejection II under either of the first and second interpretations provided by the Examiner. DECISION We REVERSE the rejection of claims 1--4 and 6-15 as anticipated by Sato '193. We REVERSE the rejection of claims 1-15 as anticipated by Sato '636. REVERSED 9