Ex Parte Kawakami

Patent Trial and Appeal BoardAug 18, 2017

10711611 (P.T.A.B. Aug. 18, 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. 10/711,611 09/28/2004 Tatsuya Kawakami SIC-04-032 5610 29863 7590 DELAND LAW OFFICE P.O. BOX 69 KLAMATH RIVER, CA 96050-0069 EXAMINER LUONG, VINH ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): bdeland 1992 @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 TATSUYA KAWAKAMI Appeal 2015-002321 Application 10/711,611 Technology Center 3600 Before CHARLES N. GREENHUT, JILL D. HILL, and GORDON D. KINDER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tatsuya Kawakami (Appellant) appeals under 35U.S.C. § 134 from the Examiner’s final decision rejecting claims 1, 3—21, 23, 24, and 26-35.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Claim 22 is pending, but has been withdrawn from consideration. Final Act. 1. Appeal 2015-002321 Application 10/711,611 BACKGROUND Sole independent claim 1, reproduced below, represents the claimed invention. 1. An apparatus for reducing an engaging force of an engaging member for a bicycle component comprising: a mounting member; a first engaging member; a movable second engaging member that moves relative to the mounting member in a first direction and in a second direction opposite the first direction; wherein the first engaging member engages the second engaging member; and a biasing mechanism that applies a biasing force to the first engaging member at a first biasing location on the first engaging member so that the first engaging member engages the second engaging member; wherein, while the first engaging member engages the second engaging member and the second engaging member moves, the biasing mechanism changes the location of the application of the biasing force from the first biasing location on the first engaging member to a different second biasing location on the first engaging member so that an engaging force applied between the first engaging member and the second engaging member when the biasing mechanism applies the biasing force to the second biasing location is less than the engaging force applied between the first engaging member and the second engaging member when the biasing mechanism applies the biasing force to the first biasing location; and wherein the biasing force is always applied to the first engaging member as the second engaging member moves through the entire range of operating movement of the second engaging member in the first and second directions. Appeal Br. 44 (Claims App.) (emphasis added). 2 Appeal 2015-002321 Application 10/711,611 REJECTIONS2 Claims 1, 3—21, 23, 24, and 26—31 stand rejected under 35 U.S.C. § 1023(a) as unpatentable over Campagnolo (US 5,791,195, iss. Aug. 11, 1998) and Hiura (US 6,508,341 Bl, iss. Jan. 21, 2003). Final Act. 3. Claims 1, 3—18, and 27 stand rejected on the ground of non-statutory type double patenting as unpatentable over claims 58, 63—66, 70, and 71 of Kawakami (US 7,882,763 B2, iss. Feb. 8, 2011) in view of Hiura. Final Act. 9. Claims 32—35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yamasaki (US 4,232,564, iss. Nov. 11, 1980) and Calendrille (US 6,862,948 Bl, iss. Mar. 8, 2005). Final Act. 10. OPINION Obviousness over Campagnolo and Hiura The Examiner finds that Campagnolo discloses the limitations of claim 1, including a biasing mechanism applying a biasing force to a first engaging member at a first biasing location on the first engaging member so that the first engaging member engages a second engaging member. Final Act 3. The Examiner finds that Campagnolo does not disclose while the first engaging member engages the second engaging member and the second engaging member moves, the biasing mechanism changes the location of the application of the biasing force from the first biasing location ... to a different second biasing location on the first engaging member so that an engaging force applied between the first engaging member and the second engaging member when the biasing mechanism applies the biasing force to the second biasing location is less 2 The rejection of claims 1, 3—21, 23, 24, and 26—35 under 35 U.S.C. § 112, second paragraph, has been withdrawn. Ans. 2. 3 Appeal 2015-002321 Application 10/711,611 than the engaging force applied between the first engaging member and the second engaging member when the biasing mechanism applies the biasing force to the first biasing location. Final Act. 2. The Examiner finds, however, that Hiura discloses an “elongated slot 20/26 formed on the first engaging member/pawl 4/5” to change the biasing force application location of the biasing mechanism 6/7 from the first biasing location to a second biasing location. Id. The Examiner concludes that it would have been obvious to “form the slot on the first engaging member of Campagnolo” to “change the location of the application of the biasing/urging force of the biasing mechanism from the first biasing location to the different second biasing location as taught or suggested by Hiura.” Id. The Examiner contends that forming a slot “on the first engaging member of Campagnolo would not have been uniquely challenging to a person of ordinary skill in the art because it is no more than ‘the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement,’” yielding no more than a predictable result. Id. Appellant argues that Hiura’s slot 20/26 fails to change the biasing force application location from a first biasing location to a second biasing location. Appeal Br. 19. Appellant explains that the position of each of Hiura’s “stop portions (6b) and (7b) relative to their respective latch pawl member (4) and position changing member (5) never change,” such that “the location of the application of the biasing forces on latch pawl member (4) and position changing member (5) by springs (6) and (7) likewise never change.” Id. (emphasis omitted). Claim 1 recites the biasing mechanism 4 Appeal 2015-002321 Application 10/711,611 changing the biasing force application location from a first biasing location on the first engaging member to a different second biasing location on the first engaging member. According to Appellant, Hiura neither discloses nor suggests a modification to Campagnolo that would facilitate changing the biasing force application location on Campagnolo’s pawl 20. Id. The Examiner responds that “Appellant’s allegation that Hiura specifically teaches keeping the biasing locations fixed is unsupported by substantial evidence.” Ans. 4—5. According to the Examiner, Hiura’s spring 6/7 is similar to Appellant’s spring 175 and Hiura’s slot 20 that is similar to Appellant’s slot 114 “in order to vary the position of Hiura’s pawl 4/5 from the ‘reverse position’ to the ‘forward position.” Id. at 5. The Examiner then argues that, as Hiura’s pawl moves from a reverse position to a forward position, the position at which its spring 6/7 is contacted with Hiura’s pawl 4/5 is changed, such that “the biasing force of Hiura’s spring 6/7 is changed/varied therewith in the same manner as Appellant’s biasing force.” Id. Appellant replies that the Examiner erred in finding that the position at which its spring 6/7 is contacted with Hiura’s pawl 4/5 changes. Appellant is correct. Although Hiura’s spring 6/7 biases its respective pawl 4/5 into forward and reverse positions, it does not follow that the position at which Hiura’s spring 6/7 contacts its respective pawl 4/5 changes. Rather, it is the direction of bias that changes in Hiura. The Examiner’s finding, that Hiura discloses a biasing mechanism that changes the location of the application of the biasing force, is in error. This finding forms the basis for rejecting all of the claims subject to the rejection over Campagnolo and 5 Appeal 2015-002321 Application 10/711,611 Hiura. We do not sustain the rejection of claims 1, 3—21, 23, 24, and 26—31 as unpatentable over Campagnolo and Hiura. Obviousness-Type Double Patenting The Examiner rejects claims 58, 63—66, 70, and 71 on the ground of obviousness-type double patenting over Kawakami in view of Hiura. The Examiner’s rejection relies on an erroneous finding regarding the disclosure of Hiura. We therefore do not sustain the double patenting rejection. Obviousness Yamasaki and Calendrille Claims 32—35 stand rejected as unpatentable over Yamasaki and Calendrille. Claims 32—35 depend directly or indirectly from claim 1 and therefore contain all of the limitations of claim 1. Thus, claims 32—35 include the limitation of a biasing mechanism that changes a biasing force application location as recited in claim 1. In setting forth this rejection, the Examiner fails to find that either Yamasaki or Calendrille discloses a biasing mechanism that changes a biasing force application location. Lacking this fundamental finding, we do not sustain the rejection of claims 32—35 as unpatentable over Yamasaki and Calendrille. DECISION We REVERSE the rejection of claims 1, 3—21, 23, 24, and 26—31 under 35 U.S.C. § 1023(a) as unpatentable over Campagnolo and Hiura. We REVERSE the rejection of claims 32—35 under 35 U.S.C. § 103(a) as unpatentable over Yamasaki and Calendrille. REVERSED 6