Ex Parte Kawakami

Patent Trial and Appeal BoardApr 28, 2016

12193109 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/193,109 08/18/2008 22919 7590 05/02/2016 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 FIRST NAMED INVENTOR Tatsuya KAWAKAMI 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-US085143 4237 EXAMINER YABUT, DANIEL D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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 TATS UY A KAWAKAMI Appeal2013-010337 Application 12/193, 109 Technology Center 3600 Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tatsuya Kawakami (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-30. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing in accordance with 37 C.F.R. Â§ 41.47 was held on April 21, 2016. We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates to a cable operating mechanism that pulls and releases an inner wire of a cable." Spec. para. 1; Figs. 2, 3, 21. Claims 1, 10, 17, and 29 are independent. Appeal2013-010337 Application 12/ 193, 109 recite: Claims 1, 10, and 17 are illustrative of the claimed subject matter and 1. A cable operating mechanism comprising: a fixed member; a wire takeup member movably mounted relative to the fixed member; a single position maintaining abutment non- movably mounted directly on and directly fixed to the wire takeup member with no relative movement therebetween, the single position maintaining abutment and the wire takeup member moving together as a unit relative to the fixed member during a wire releasing operation; and a positioning member pivotally mounted relative to the fixed member, the positioning member having a plurality of positioning abutments that selectively engage the single position maintaining abutment to position the wire takeup member in one of a plurality of predetemined wire positions corresponding to rest positions of the wire takeup member. l 0. 1A'.l. cable operating mechanism comprising: a fixed member; a wire takeup member pivotally mounted relative to the fixed member about a first pivot axis; a positioning member pivotally mounted relative to the fixed member about a second pivot axis that is offset from the first pivot axis, the positioning member including a plurality of positioning abutments that selectively engage the wire takeup member and selectively maintain the wire takeup member in one of a plurality of predetermined wire positions corresponding to rest positions of the wire takeup member; and a wire releasing member including a plurality of release abutments that selectively engage the positioning member and move the positioning member during a wire releasing operation of the wire releasing member, the wire releasing member engaging a same one of the positioning 2 Appeal2013-010337 Application 12/ 193, 109 abutments in at least two of the predetermined wire positions of the wire takeup member. 17. A cable operating mechanism comprising: a fixed member; a wire takeup member pivotally mounted relative to the fixed member; a driven abutment fixed to the wire takeup member with no relative movement therebetween, the driven abutment and the wire takeup member moving together as a unit relative to the fixed member as the wire takeup member pivots relative to the fixed member; and a wire pulling member movably mounted relative to the fixed member and the wire takeup member, the wire pulling member including a plurality of drive abutments selectively engaging the driven abutment to drive the driven abutment, the wire pulling member moving the wire takeup member as the wire pulling member moves during the wire pulling operation of the wire pulling member. REJECTIONS I. Claims 9, 16, and 26 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. II. Claims 1-5, 7, 10-12, 14, 16-21, 23, 24, 26, and 28 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Assel (US 6,502,477 Bl; iss. Jan. 7, 2003). III. Claims 10, 27, 29, and 30 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Elsen (WO 95/03208 Al; pub. Feb. 2, 1995). 1 1 We derive our understanding of this reference from a machine generated translation, which is available in the electronic file wrapper of the underlying application. All references to the text of Elsen are to portions of the 3 Appeal2013-010337 Application 12/ 193, 109 IV. Claims 6, 8, 9, 13, 15, 22, and 25 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Assel and Kawakami (US 2007 /0068316 Al, pub. Mar. 29, 2007). ANALYSIS Indefiniteness Claims 9, 16, and 26 Each of dependent claims 9, 16, and 26 recites "the wire pulling member and the positioning member are operatively coupled to the release operating lever, the release operating lever moving the wire pulling member and the positioning member together as the release operating lever moves during the wire releasing operation." Appeal Br. 35, 36, 41, Claims App. The Examiner determines that "[t]his limitation exemplifies a recitation of some structure (the release operating lever) followed by its function, but does not recite the particular structure, materials or steps that accomplish the function." Ans. 5; see also Final Act. 2. Appellants' Specification describes: This pivotal movement of the wire positioning member 22 also causes the contact extension 22c of the wire positioning member 22 to contact the contact portion 34d of the wire pulling member 34 so as to rotate the wire pulling member 34 about the third pivot axis A3 during the wire releasing operation. Thus, during the wire releasing operation, the contact extension 22c contacts the contact portion 34d so that the wire positioning member 22 and the wire pulling member 34 move together with the movement of the release operating lever 40. Spec. para. 88. translation. 4 Appeal2013-010337 Application 12/ 193, 109 At the outset, we agree with Appellants that "[t]he contact extension 22c is part of the claimed positioning member 22 and the contact portion 34d is part of the claimed wire pulling member 34." Appeal Br. 12 (emphasis omitted). We further agree with Appellants that "one skilled in the art would have [no] trouble understanding the structure that achieves [the recited language in claims 9, 16, and 26] since that structure is already broadly claimed, and the specification clearly elucidates the details of the claimed structural interactions" and "the scope of the subject matter embraced by the claims is [clear]." Id. The Examiner appears to require that the claims specify exactly the structure that achieves the claimed function. However, by not specifying the exact structure, the claims are merely broad, not ambiguous. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCP A 1977) (providing that breadth is not indefiniteness). Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 9, 16, and 26 as indefinite. Anticipation by Assel Claims 1-5 and 7 Independent claim 1 recites, in relevant part, "a single position maintaining abutment non-movably mounted directly on and directly fixed to the wire takeup member." Appeal Br. 33, Claims App. The Examiner finds that Ass el teaches " [a] [ s] ingle position maintaining abutment ( 14) non-movably mounted directly on and fixed to the wire takeup member (see direct engagement between 14 and teeth 9 upon wire takeup member 3[)]." Final Act. 3. The Examiner further finds that detent nose 14 of Assel is "non-movably mounted directly on and directly fixed to" actuating part 3 when detent nose 14 is engaged with actuating part 3 via teeth 9 of 5 Appeal2013-010337 Application 12/ 193, 109 detent disk 17 when the parts "are not in motion" (i.e., at rest). Ans. 7; see also Appeal Br. 14. Assel teaches that (1) "[t]he actuating part 3 has a first detent disk 16 with a first toothed segment 8 and a second detent disk 17 with a second toothed segment 9" (Assel, col. 2, 11. 55-58, Fig. 1 ); and (2) "a detent element 12 having a first detent nose 13 and a second detent nose 14" (id. at col. 3, 11. 1-3, Fig. 2). We agree with Appellants that Assel "does not teach directly mounting and directly fixing [] detent nose 14 to [] actuating part 3 non-movably." Appeal Br. 15. Further, a skilled artisan would not reasonably consider engagement of detent nose 14 of Assel with actuating part 3 when the parts "are not in motion" (i.e., at rest) to mean that detent nose 14 is "non-movably mounted directly on and directly fixed to" actuating part 3 as claimed. Based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that Assel anticipates the cable operating mechanism of claim 1. Accordingly, we do not sustain the Examiner's rejection of claims 1-5 and 7 as anticipated by Assel. Claims 10--12, 14, and 16 Independent claim 10 recites, in relevant part, "the positioning member including a plurality of positioning abutments that selectively engage the wire takeup member" and "the wire releasing member engaging a same one of the positioning abutments [of the wire takeup member]." Appeal Br. 36, Claims App. The Examiner finds that Assel teaches that "positioning member [ 12] include[ s] a plurality of positioning abutments (12, 14, 13, 20) that selectively engage []wire takeup member [3]" "the wire releasing member [19] engaging a same one (20) of the positioning 6 Appeal2013-010337 Application 12/ 193, 109 abutments [of the wire takeup member]." Final Act. 5---6; see also Ans. 8. We agree with the Examiner that detent noses 13, 14 of detent element (positioning member) 12 constitute positioning abutments that engage actuating part (wire takeup member) 3. Final Act. 5; see also Assel, col. 3, 11. 14--21, Figs. 1, 2. However, extension 20 of detent element (positioning member) 12 engages/interacts with cam contour (wire releasing member) 19 of release lever 10 but does not engage actuating part (wire takeup member) 3. See Assel, col. 3, 11. 12-14, Figs. 1-3; see also Appeal Br. 1 7. Because extension 20 of detent element (positioning member) 12 does not engage actuating part (wire takeup member) 3, we agree with Appellants that cam counter (wire releasing member) 19 of Assel "does not engage a same one of the positioning abutments [of actuating part (wire takeup member) 3]." Appeal Br. 17; see also Final Act. 5-6; Ans. 8. As such, the Examiner fails to establish by a preponderance of the evidence that Assel anticipates the cable operating mechanism of claim 10. Accordingly, we do not sustain the Examiner's rejection of claims 10- 12, 14, and 16 as anticipated by Assel. Claims 17-21, 23, 24, 26, and 28 Independent claim 17 recites, in relevant part, "a driven abutment fixed to the wire takeup member with no relative movement there between." Appeal Br. 38, Claims App. The Examiner finds that Assel teaches "[a] [d]riven abutment (1, 6, 25, 26) fixed to the wire takeup member [3] with no relative movement there between (during a winding operation, portion 6 is engaged and rotates with wire takeup member 3, there being no relative movement)." Final Act. 7; see also Ans. 9. 7 Appeal2013-010337 Application 12/ 193, 109 Assel teaches that ( 1) "actuating part 3 [] can be moved by an actuating lever 1 and by a release lever 10" (Assel, col. 2, 11. 51-52 (emphasis added), Fig. 1); and (2) "[t]he actuating part 3 can be turned by the actuating lever 1 by means of a pawl 6, which engages in toothing 7 connected rotationally to the actuating part 3. When the actuating lever 1 is moved, this movement is transmitted to the actuating part 3 by the pawl 6" (id. at col. 2, 11. 60-64 (emphasis added), Fig. 1 ). We agree with Appellants that "there is relative movement between the driving pawl 6 (the actuating lever 1) and[] actuating part 3." Appeal Br. 19. We further agree with Appellants that actuating lever 1 is "not fixed" to actuating part 3, "even if the two rotate together during some portion of a wire winding operation." Id. Based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that Assel anticipates the cable operating mechanism of claim 17. Accordingly, we do not sustain the Examiner's rejection of claims 17- 21, 23, 24, 26, and 28 as anticipated by Assel. Anticipation by Elsen Claims 10, 27, 29, and 30 Independent claim 10 recites, in relevant part, "the positioning member including a plurality of positioning abutments that selectively engage the wire takeup member" and "the wire releasing member engaging a same one of the positioning abutments [of the wire takeup member]." Appeal Br. 36, Claims App. The Examiner finds that Elsen teaches that positioning member ( 40, 43, 55) includes "a plurality of positioning abutments (a-k; 45, 56) that selectively engage the wire takeup member [34] (abutment 37 engages positioning member 40, elements 55 and 43 8 Appeal2013-010337 Application 12/ 193, 109 engage the wire takeup member 34 since all elements are integrally connected)." Final Act. 10-11. The Examiner further finds that "wire releasing member 4 7 would inherently [engage] the very same positioning abutment 56 [of wire takeup member 34]." Ans. 12 (citing Elsen, p. 7). In this case, we agree with Appellants that tooth (positioning abutment) 56 of Elsen does not engage oscillating lever (wire takeup member) 34; thus, shift lever (wire releasing member) 47 of Elsen "does not engage a same one" of the positioning abutments of oscillating lever (wire takeup member) 34. See Reply Br. 15; see also Elsen, Fig. 5. As such, the Examiner fails to establish by a preponderance of the evidence that Elsen anticipates the cable operating mechanism of claim 10. Independent claim 29 includes the same limitations discussed above for claim 10. See Appeal Br. 41--42, Claims App. The Examiner relies on the same unsupported findings for claim 29 as claim 10. See Final Act. 11- 12; see also Ans. 12. Thus, the Examiner's findings with respect to Elsen are deficient for claim 29 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of independent claims 10 and 29 and their respective dependent claims 27 and 30 as anticipated by Elsen. Obviousness over Assel and Kawakami Claims 6, 8, 9, 13, 15, 22, and 25 The Examiner's rejection of claims 6, 8, 9, 13, 15, 22, and 25 as unpatentable over Assel and Kawakami is based on the same unsupported findings discussed above with respect to independent claims 1, 10, and 17. See Final Act. 13-16. The Examiner does not rely on Kawakami to remedy the deficiency of Assel. Accordingly, for similar reasons, we do not sustain 9 Appeal2013-010337 Application 12/ 193, 109 the Examiner's rejection of claims 6, 8, 9, 13, 15, 22, and 25 as unpatentable over Assel and Kawakami. DECISION We REVERSE the decision of the Examiner to reject claims 1-30. REVERSED 10