Ex Parte Kawakami et al

Patent Trial and Appeal Board

Jun 20, 2017

11462478 (P.T.A.B. Jun. 20, 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.
11/462,478 08/04/2006 TATSUYA KAWAKAMI SIC-06-007 5352
29863 7590 06/22/2017
DELAND LAW OFFICE
P.O. BOX 69
KLAMATH RIVER, CA 96050-0069
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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 and ETSUYOSHI WATARAI
Appeal 2015-008029
Application 11/462,478
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 7—12, 21—30, 52—54, 57, 58, and 60-65. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 “The assignee and real party in interest is Shimano, Inc.” (Appeal Br. 1.)
Appeal 2015-008029
Application 11/462,478
STATEMENT OF THE CASE
The Appellants’ invention “is directed to bicycles and, more
particularly, to a bicycle shift operating device with a multi-direction
operating member.” (Spec. 12.)
Illustrative Claim
1. A shift operating device for a bicycle transmission
comprising:
a mounting member structured to be mounted to the
bicycle;
a cable coupling member coupled to the mounting member
for moving a cable in a cable pulling direction and a cable
releasing direction;
a positioning unit that selectively maintains the cable
coupling member in a plurality of operating positions, wherein
each operating position corresponds to a shift position of the
bicycle transmission, wherein the positioning unit includes a
positioning member that moves in a gear shift initiating direction
to initiate a gear shift, wherein the gear shift is movement of the
cable coupling member from an origin operating position that
corresponds to an origin shift position of the bicycle transmission
to a destination operating position that corresponds to a
destination shift position of the bicycle transmission;
a first operating member operatively coupled to the
mounting member so that the first operating member moves in a
first direction and in a second direction different from the first
direction;
wherein the first operating member includes an operating
location that moves in the same direction when the first operating
member moves in either the first and second directions; and
an intermediate member operatively coupled to the
operating location of the first operating member and operatively
coupled to the positioning member so that the positioning
member moves in the gear shift initiating direction when the first
operating member moves in the first direction and so that the
positioning member moves in the gear shift initiating direction
when the first operating member moves in the second direction;
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Application 11/462,478
wherein the first operating member causes the initiation of
the gear shift when the first operating member moves in the first
direction, and wherein the first operating member causes the
initiation of the gear shift when the first operating member moves
in the second direction;
wherein the cable coupling member moves from the origin
operating position toward the destination operating position in a
predetermined direction to initiate the gear shift when the first
operating member moves in the first direction, and wherein the
cable coupling member moves from the origin operating position
toward the destination operating position in the same direction as
the predetermined direction to initiate the gear shift when the first
operating member moves in the second direction;
wherein the first operating member has a neutral position;
wherein the first operating member moves in the first
direction from the neutral position toward a first operating
member gear shift initiating position;
wherein the first operating member moves in the second
direction from the neutral position toward a different second
operating member gear shift initiating position; and
wherein the neutral position is disposed between the first
operating member gear shift initiating position and the second
operating member gear shift initiating position;
wherein the first operating member automatically returns
to the neutral position when a user releases the first operating
member after moving the first operating member in the first
direction or the second direction; and
wherein the first operating member remains in the neutral
position after the user releases the first operating member.
Rejection
The Examiner rejects claims 1, 2, 7—12, 21—30, 52—54, 57, 58, and
60-65 under 35 U.S.C. § 112, second paragraph, as indefinite. (Final
Action 2.)
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Application 11/462,478
ANALYSIS
Claims 1 and 52 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2, 7—12, 21—30, 53, 54, 57, 58, and 60-65)
depending directly or indirectly therefrom. (See Appeal Br., Claims App.)
Independent claim 1 recites “[a] shift operating device for a bicycle
transmission” comprising “a mounting member,” “a cable coupling
member,” “a positioning unit,” “a first operating member,” and “an
intermediate member.” (Appeal Br., Claims App.) Independent claim 1 also
recites functional limitations in conjunction with these elements. (See id.)
According to the Examiner, independent claim 1 does not contain the
particular structure that accomplishes the recited functions and, therefore, is
indefinite. (See Final Action 2—3.)
We are persuaded by the Appellants’ position (see Appeal Br. 10-16)
that the Examiner does not adequately establish that independent claim 1 is
indefinite. We are persuaded because, according to the Appellants,
independent claim 1, as a whole, particularly recites the structure responsible
for achieving the recited functions. (See Reply Br. 17.) For example,
independent claim 1 recites that the cable coupling member is “coupled to”
the mounting member; the first operating member is “operatively coupled
to” the mounting member; and the intermediate member is “operatively
coupled to” both the first operating member and the positioning member.
(Appeal Br., Claims App.) The Examiner does not sufficiently establish
that, despite these structural limitations, independent claim 1 can still be
fairly characterized as “[a] claim that contains functional language” and
“does not recite the particular structure that is chiefly responsible for
achieving the recited fimction[s].” (Answer 3.)
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Application 11/462,478
Thus, on the record before us, we cannot sustain the Examiner’s
rejection of independent claim 1, and the claims depending therefrom, as
indefinite.
Independent claim 52 similarly recites “[a] shift operating device for a
bicycle transmission” comprising “a mounting member,” “a cable coupling
member,” “a positioning unit,” and other components in conjunction with
functional limitations. (See Appeal Br., Claims App.) For the same reasons
discussed above in connection with independent claim 1, we are persuaded
by the Appellants’ position (see Appeal Br. 17—19) that the Examiner does
not sufficiently establish that independent claim 52, as a whole, fails to
particularly recite the structure responsible for achieving the recited
functions. (See Reply Br. 17.) We are likewise persuaded by the
Appellants’ position with respect to dependent claims 57 and 58. (See
Appeal Br. 19—20.)
Independent claim 52 additionally recites “a release element that
moves at least in part linearly” (Appeal Br., Claims App.) and the Examiner
appears to maintain that this recital is inconsistent with the description of
release element 171 in the Specification. (See Final Action 3 4.) We are
persuaded by the Appellants’ position that the Specification clearly conveys
to one of ordinary skill in the art that element 171 has two types of
movement, namely a “rotation” around an axis and “linear” movement “to
the left.” (Appeal Br. 17; see also Spec. 1 66.)
However, the Examiner further maintains that a claim element recited
in independent claim 52 lacks insufficient antecedent basis (see Final
Action 3) and the Appellants concede that an amendment is necessary to
resolve this indefmiteness problem (see Appeal Br. 16—17). Although the
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Application 11/462,478
Appellants propose an amendment believed to cure this indefmiteness, the
record reflects that this amendment has not yet been entered.
Thus, on the record before us, we must sustain the Examiner’s
rejection of independent claim 52, and the claims depending therefrom, as
indefinite.
DECISION
We REVERSE the Examiner’s rejection of claims 1, 2, 7—12, 21—30,
and 60 under 35U.S.C. § 112, second paragraph.
We AFFIRM the Examiner’s rejection of claims 52—54, 57, 58, and
61—65 under 35 U.S.C. § 112, second paragraph.
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 IN PART
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