Ex Parte LIM

Patent Trials and Appeals BoardJun 19, 2019

14050821 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/050,821 10/10/2013 22919 7590 06/21/2019 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 FIRST NAMED INVENTOR Guang Sheng Elson LIM 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-US135246 9197 EXAMINER DIAZ, THOMAS C ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 06/21/2019 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 GU ANG SHENG ELSON LIM Appeal2017-010246 Application 14/050,821 Technology Center 3600 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-18. 1 An oral hearing was held in this matter on June 13, 2019. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 SHIMANO (SINGAPORE) PTE LTD. is the Applicant and is identified as the real party in interest. Appeal Br. 3. Appeal2017-010246 Application 14/050,821 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is representative of the claimed subject matter. 1. A bicycle operating device comprising: a base member; a holding member configured to be movable relative to the base member between a rest position and an operated position; a stopping member configured to be movable relative to the base member in a first direction, the stopping member configured to engage the holding member so that movement of the stopping member in the first direction is prevented while the holding member is in the operated position; and a positioning member configured to be movable relative to the base member in the first direction, the positioning member configured to engage the holding member so that movement of the positioning member in the first direction is prevented while the holding member is in the rest position, the positioning member configured to move relative to the stopping member in the first direction while the holding member is in the operated position. REJECTI0NS 2 1) The Examiner rejected claims 1-18 under 35 U.S.C. Â§ 112(b) as indefinite. 2) The Examiner rejected claims 1-3, 5-9, and 12-18 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Nagano (US 5,186,072, issued Feb. 16, 1993). 2 The Examiner objected to claims 4, 10, and 11 as being dependent on a rejected base claim but indicated that these claims would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims. 2 Appeal2017-010246 Application 14/050,821 DISCUSSION Rejection 1 Appellant argues claim 1-18 as a group. Appeal Br. 8-10. We select claim 1 as representative and claims 2-18 stand or fall with claim 1. 37 C.F.R. Â§ 41.37 (c)(l)(iv). The Examiner rejected claim 1 under 35 U.S.C. Â§ 112(b) as indefinite because "it is not certain what exactly is the particular structure which allows for the very specific functional relationships present" and, according to the Examiner, claim 1 "is akin to unlimited functional language claiming because Applicant [is] using broad terminology followed by specific functionality in an attempt to avoid structural claiming." Final Act. 3. Appellant contends that one of ordinary skill in the art "would have absolutely no trouble understanding the recitations 'holding member,' stopping member' and 'positioning member."' Appeal Br. 8. In support of the contention, Appellant directs us to various portions of the Specification which, according to Appellant, "are clearly indicative of these structural relationships such that one skilled in the art would have no trouble understanding the particular structure that accomplishes these recitations." Id. at 9. The statute provides that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention." 35 U.S.C. Â§ 112(b ). The breadth of a claim, however, is not to be equated with indefiniteness. See e.g., In re Miller, 441 F.2d 689,693 (CCPA 1971). We note that in certain circumstances functional language may be used to add limitations to an apparatus claim. See K-2 Corp. v. Salomon S.A., 191 F.3d 3 Appeal2017-010246 Application 14/050,821 1356, 1363 (Fed. Cir. 1999); Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443--44 (Fed. Cir. 1997). Functional language adds a structural limitation to an apparatus claim if the language describes something about the structure of the apparatus rather than merely listing its intended or preferred uses. See K-2 Corp., 191 F. 3d at 1363 ("[T]he functional language tells us something about the structural requirements of the attachment between the bootie and the base."); In re Venezia, 530 F.2d 956, 959 (CCP A 197 6) (finding limitation directed to "retaining members adapted to be positioned respectively between each of said sleeves fitted over the insulating jacket of each said cable" not indefinite). For the following reasons, we determine that claim 1 fails to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. We note initially that we reviewed the portions of the Specification cited by Appellant in support of its contention that the recitations in claim 1 are not indefinite and determine that the Specification is not dispositive of the issue before us because, to the extent that the Specification describes structural characteristics of the recited members, those portions of the Specification do not appear in the claims. For example, Appellant submits that "[t ]he positioning member is structurally configured to 'position' the wire takeup member 40." Reply Br. 5. However, a wire takeup member is not recited in claim 1. The recitations which the Examiner determined are indefinite recite functions for the particular "member," but fail to recite an element or elements describing the structure of the "member" required for performing the functions. The "holding member" is recited as "configured to be 4 Appeal2017-010246 Application 14/050,821 movable relative to the base member between a rest position and an operated position." Although Appellant argues that the Specification sheds light on the structural relationships (Appeal Br. 9), presumably between the various members, claim 1 does not recite whether the holding member is in contact with or connected to the base member but merely recites that it is configured to be movable relative to the base member. Further, claim 1 fails to contain any recitation describing any structure of the holding member for performing the function of moving relative to the base member between a rest and operated position. Rather, the claim recites the function of moving between a rest position and an operated position relative to the base member. The "stopping member" is recited as "configured to be movable relative to the base member in a first direction" and "to engage the holding member so that movement of the stopping member in the first direction is prevented while the holding member is in the operated position." Claim 1 does not recite whether the stopping member is in contact with or connected to the base member and fails to contain any recitation describing any structure for performing the functions of moving relative to the base member in a first direction or engaging the holding member so that movement of the stopping member in the first direction is prevented while the holding member is in the operated position. The "positioning member" is recited as "configured to be movable relative to the base member in the first direction" and "to engage the holding member so that movement of the positioning member in the first direction is prevented while the holding member is in the rest position" and "to move relative to the stopping member in the first direction while the holding member is in the operated position." Claim 1 does not recite whether the positioning member is in contact with or connected to the base 5 Appeal2017-010246 Application 14/050,821 member and fails to contain any recitation describing any structure for performing the functions of moving relative to the base member in the first direction or engaging the holding member so that movement of the positioning member in the first direction is prevented while the holding member is in the rest position or for moving relative to the stopping member in the first direction while the holding member is in the operated position. We agree with the Examiner that claim 1 is indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor regards as the invention because the functional limitations of claim 1, unlike those in K-2 Corp. and Venezia, merely describe the use or function of the various recited members and not any structure for performing the function. The issue with claim 1 is not the breadth of the claim, where many structures for performing the various functions may fall within its scope, but rather virtually all structures for performing the recited functions fall within its scope. Therefore, we sustain the rejection of claims 1-18 under 35 U.S.C. Â§ 112(b) for failure to particularly point out and distinctly claim the subject matter that the inventor regards as the invention. Rejection 2 We do not sustain the rejection of claims 1-3, 5-9, and 12-18 under 35 U.S.C. Â§ 102(a)(l) as anticipated byNagumo because this would require us to make speculative assumptions as to the meaning of the limitations "holding member," "stopping member," and "positioning member." See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). It must be understood, however, that our decision regarding the prior art rejection is based solely on 6 Appeal2017-010246 Application 14/050,821 the indefiniteness of the claims and does not reflect in any manner on the adequacy of the prior art evidence relied upon in the Examiner's rejection. DECISION The Examiner's decision rejecting claims 1-18 under 35 U.S.C. Â§ 112(b) is affirmed. The Examiner's decision rejecting claims 1-3, 5-9, and 12-18 under 35 U.S.C. Â§ 102(a)(l) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7