Ex Parte Matsushita et alDownload PDFPatent Trial and Appeal BoardMar 10, 201612535703 (P.T.A.B. Mar. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/535,703 124236 7590 Mori & Ward, LLP 225 Reinekers Lane Suite 690 FILING DATE 08/05/2009 03/14/2016 Alexandria, VA 22314 FIRST NAMED INVENTOR Tatsuya MATSUSHITA 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. 01177_1007 1903 EXAMINER NGUYEN,VUQ ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 03/14/2016 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): usptomail@moriward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TATS UY A MAT SUS HIT A and DAISUKE NAGO Appeal2014-001589 Application 12/535,703 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tatsuya Matsushita and Daisuke Nago (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1, 3, 7- 10, and 12. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Claim 11, which is the only other pending claim, is objected to as being dependent upon a rejected base claim. Non-Final Office Action, dated January 7, 2013 ("Non-Final Act.") 7. Appeal2014-001589 Application 12/535,703 CLAIMED SUBJECT MATTER Appellants' claimed subject matter relates to "a hydraulic brake control apparatus with a portion embedded in a bar opening of a bicycle handlebar." Spec. para. 1. Of those claims before us on appeal, claims 1, 9, and 12 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A hydraulic brake control apparatus comprising: a body portion having a first section configured to fit within an interior of a bar opening and a second section configured to be mounted outside of the interior of the bar opemng; a hydraulic brake control mechanism including a hydraulic brake pressure cylinder having a piston chamber therein, at least a portion of said hydraulic brake control mechanism being housed within said first section of said body portion; and a lever portion connected to said body portion and configured to actuate said hydraulic brake control mechanism, wherein said body portion includes a port fluidly connected to said piston chamber by a conduit, said port being provided on said second section of said body portion and said conduit extending into the first section of the body portion within the interior of the bar opening in order to allow bleeding of air from within said piston chamber when said body portion is mounted to the bar opening, wherein said hydraulic brake control mechanism further includes a piston slidably provided within said piston chamber along an axis thereof, wherein said axis of said piston chamber is provided at an inclined angle such that said axis is inclined as compared to an axis of the bar opening when the body portion is mounted to the bar opening, and 2 Appeal2014-001589 Application 12/535,703 wherein said piston chamber has an elevated area at one end thereof, and wherein said conduit is fluidly connected to said piston chamber at said elevated area. EVIDENCE The Examiner relied upon the following evidence: Becocci Heath Burgess Amold2 US 2004/0163897 Al GB 3651 GB 800,196 DE 296 03 807 Ul REJECTIONS Aug.26,2004 May 26, 1904 Aug.20, 1958 May 9, 1996 Appellants appeal from the Non-Final Action, dated January 7, 2013, which includes the following rejections: 1. Claims 1, 3, 7, 8, and 12 under 35 U.S.C. § 103(a) as unpatentable over Heath, Burgess, and Becocci. 2. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Heath and Arnold. ANALYSIS First Ground of Rejection: Obviousness based on Heath, Burgess, and Becocci Appellants argue the claims subject to the first ground of rejection as a group. Appeal Br. 5-10. We select claim 1 as the representative claim, and claims 3, 7, 8, and 12 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). 2 All citations to Arnold refer to the English-language translation entered into the record by the Examiner with a copy of the foreign reference on February 17, 2012. See Notice of References Cited, dated Feb. 17, 2012. 3 Appeal2014-001589 Application 12/535,703 With regard to claim 1, the Examiner found that Heath discloses a hydraulic brake control apparatus comprising "a hydraulic brake control mechanism including a hydraulic brake pressure cylinder (B) having a piston chamber therein (see Fig. 1 ), ... wherein said hydraulic brake control mechanism further includes a piston (A) slidably provided within said piston chamber along an axis thereof (see Fig. 1 )." Non-Final Act. 2-3. The Examiner acknowledged that Heath fails to disclose the claimed port for bleeding air from the piston chamber, that the piston chamber is provided at an inclined angle relative to the axis of the handlebar opening, and that the port is connected to an elevated area at one end of the piston chamber by a conduit. Id. at 3, 4. The Examiner found that Burgess discloses "a port (at 29) fluidly connected to a piston chamber (at 15, 17) by a conduit (26, 27) in order to 11 11 1• ,.. • ,.. •,1• •1 •, 1 1 / l"'\1. ,--1 au ow 01eeamg or air rrom wnnm sa10 p1st0n cnamoer ~see page L, imes J 1- 60)." Id. at 4 (citing Burgess, Fig. 13). The Examiner determined that it would have been obvious to modify the brake control apparatus of Heath to include a port connected to the piston chamber by a conduit for bleeding air, as taught by Burgess, in order "to merely provide the predictable result of an external connection to the internal piston chamber, thereby providing 3 We note that Burgess includes two sets of Drawings: (i) Figures 1--4 of the Complete Specification, and (ii) Figures 1-5 of the Provisional Specification. Because the Examiner's citation to page 2, lines 51---60 of Burgess refers to the Complete Specification (see Burgess 1-5), we understand the Examiner's citation to Figure 1 of Burgess to refer to the drawings of the Complete Specification. 4 Appeal2014-001589 Application 12/535,703 delivery or bleeding means which increase versatility and robustness." Id. at 3--4. The Examiner also found that Becocci discloses "an axis of a piston chamber (at 6) being provided at an inclined angle such that said axis is inclined as compared to an axis of a bar (2) (see Fig. 3)." Id. at 4. The Examiner determined that it would have been obvious to modify the apparatus of Heath so that the piston chamber is inclined, as taught by Becocci, in order to "provide the predictable result of a suitable, alternative arrangement depending on various factors such as space, cost, and manufacturability." Id. In addition, the Examiner determined that it would have been obvious to fluidly connect the port conduit of Heath's device, as modified by Burgess, to the elevated area at one end of the inclined piston chamber in order "to provide a suitable, alternative, arrangement or location of the conduit depending on various factors such as space, cost, and manufacturability." Id. at 4--5. The Examiner further reasoned that "there are only a finite number of locations to fluidly connect the conduit to the piston chamber." Id. at 5. Appellants argue that neither Burgess nor Becocci discloses: [A] configuration wherein said piston chamber has an elevated area at one end thereof, and wherein said conduit is fluidly connected to said piston chamber at said elevated area, or a configuration wherein said piston chamber has an elevated area at one end thereof that extends above an opposite end of said piston chamber, and wherein said conduit is fluidly connected to an uppermost area of said elevated area. 5 Appeal2014-001589 Application 12/535,703 Appeal Br. 7-8; Reply Br. 3. In particular, Appellants assert that "Burgess does not disclose a conduit fluidly connected to an elevated area" and that "Becocci ... does not disclose or even suggest a conduit that is fluidly connected to said piston chamber at said elevated area." Appeal Br. 8, 9; see Reply Br. 3. Appellants' arguments are not persuasive because they fail to address the Examiner's rejection, which is based on a determination of what would have been obvious to one of ordinary skill in the art in view of the combined teachings of the prior art. .See Non-Final Act 2-5. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, the Examiner relied on Burgess for teaching an air bleeding port connected to a piston chamber by a conduit, and on Becocci for teaching an inclined piston chamber. See Non-Final Act 3, 4. Appellants' argument does not address the Examiner's detennination that it would have been obvious to one of ordinary skill in the art to fluidly connect the port conduit to the elevated area at one end of the inclined piston chamber as an alternative location of the conduit depending on various factors such as space, cost, and manufacturability, and because there are only a finite number of locations at which to connect the port conduit to the piston chamber. See id. at 4--5; see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within 6 Appeal2014-001589 Application 12/535,703 his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and cmnmon sense."). Appellants further argue that Burgess and Becocci teach away from the claimed invention because each reference discloses configurations in which a conduit attaches to a lower or bottom portion of a piston chamber. Appeal Br. 8, 9; Reply Br. 3. In particular, Appellants assert that "in FIG. 2 [of Burgess], the conduit is in fact connected to a lower portion of the chamber, and is clearly not fluidly connected at an elevated area." Appeal Br. 8; see Reply Br. 3. Appellants also assert that "FIG. 1 of Becocci depicts a fluid outlet on a bottom of the piston ( 6) and at a location in the middle of the piston, and not at an elevated area at one end of the piston chamber, as claimed." Appeal Br. 9; Reply Br. 3. Appellants' arguments are not persuasive because they do not point out why a person of ordinmy skill, upon reading each reference, would have been led in a direction divergent from the path taken by Appellants. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant"). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("mere disclosure of alternative designs does not teach away"). Appellants do not direct us to any disclosure in Burgess or Becocci that discredits or discourages attaching the pmi conduit to the elevated end of the inclined 7 Appeal2014-001589 Application 12/535,703 piston chamber as proposed by the Examiner. Moreover, Appellants' reliance on Figure 2 of Burgess and Figure 1 of Becocci is rnisp1aced because the Examiner did not re1y on either of the embodiments depicted in these figures in the rejection. See Non-Final Act. 3----4. Appellants also argue that the Examiner's combination of prior art references is improper because "[t]here is no rationale in the applied art for modifying the teachings in the applied art to arrive at the claimed invention." Reply Br. 4. In this regard, Appellants assert: [T]here is no teaching in the applied art that would have led one of ordinary skill in the art to provide a conduit at an opposite end of the piston in Burgess and/or Heath, or in a location different from the lower, middle location in FIG. 1 of Becocci to arrive at a conduit at the upper end of the piston chamber in FIG. 3 of Becocci. Appeal Br. 9; see Reply Br. 4. Appellants' argument is unpersuasive for two reasons. First, the argument urges us to apply a strict teaching, suggestion, or motivation (TS1Vf) test for obviousness. Rigid application of the TS1\t1 test was explicitly disavowed by the Supreme Court in KS'Ic. 550 U.S. at 415, 419. Second, Appellants' argument does not address the Examiner's articulated reasoning for the conclusion of obviousness. Instead, Appellants mischaracterize the Examiner's rejection by asserting that the Examiner "does not appear to set forth any rationale, other than to simply say that the recited configuration would have been an inherent result from the piston chamber being inclined as taught in Becocci." Reply Br. 2. Here, the Examiner articulated adequate reasoning based on rational underpinnings as 8 Appeal2014-001589 Application 12/535,703 to why it would have been obvious to one of ordinary skill in the art to fluidly connect the port conduit to the elevated area at one end of the inclined piston chamber. See Non-Final Act. 4-5 (the Examiner explained that such a modification would "provide a suitable, alternative, arrangement or location of the conduit depending on various factors such as space, cost, and manufacturability"). As such, we disagree with the Appellants' assertion that the Examiner does not set forth any rationale for the proposed modification. For the above reasons, we sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Heath, Burgess, and Becocci. Claims 3, 7, 8, and 12 fall with claim 1. Second Ground of Rejection: Obviousness based on Heath and Arnold Appellants argue the claims subject to the second ground of rejection as a group. Appeal Br. 10-13. \Ve select claim 9 as the representative claim, and claim 10 stands or falls with claim 9. See 3 7 C.F .R. § 41.37(c)(l)(iv). With regard to claim 9, the Examiner found that Heath discloses a hydraulic brake control apparatus including a body portion, a control mechanism, and a lever, except that Heath does not disclose the claimed mounting portion and mounting screw. Non-Final Act. 5-6. However, the Examiner found that Arnold discloses: [A] mounting arrangement comprising a mounting portion ( 40) configured to slide on an inclined surface (3 8) on an outer circumferential surface (as broadly recited) of a first section (34) (see page 4, lines 1-8 of the English machine translation); and at least one mounting screw (52) configured to connect said 9 Appeal2014-001589 Application 12/535,703 mounting portion to a body portion (18, 34 ), wherein said at least one mounting screw is configured to slide said mounting portion along said inclined surface so as to push said mounting portion and a side of said first section against an inner surface of a bar opening (see Fig. 1 and bar 16) in order to mount said body portion to the bar opening (see page 4, lines 1-8 of the English machine translation). Id. at 6. The Examiner determined that it would have been obvious to modify Heath's hydraulic brake control apparatus to include Arnold's mounting arrangement in order "to merely provide the predictable result of a suitable, alternative mounting arrangement based on various factors such as cost, space, availability, and manufacturability." Id. at 6-7. The Examiner explained further that Arnold teaches "an alternative mounting arrangement using a wedging function, which can be used at the mounting arrangement (at g[3]) of Heath .... between element g[1] and the handlebar C." Id. at 8. Appellants argue that the Examiner's proposed modification would render Heath's brake apparatus inoperable because "[i]f the mounting arrangement of Arnold is incorporated at location (g3) of Heath as is asserted, then the mounting arrangement would prevent the small tilting lever or link (f1) from pivoting to actuate the piston." Appeal Br. 11. In particular, Appellants assert that "the outward pressure used by Arnold to press against the inner surface of the handlebar in order to hold the device within the handlebar would press against the cylinder (B) of Heath and would prevent the piston (A) from being able to operate and slide within the cylinder (B) in the manner intended." Reply Br. 6. We disagree with this argument, which appears to be based on bodily incorporation of specific 10 Appeal2014-001589 Application 12/535,703 structures of the actuating device of Arnold into the hydraulic brake device of Heath. To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). We understand the Examiner's rejection to be based upon using the technique disclosed in Arnold as a means to secure the brake control apparatus of Heath within the handlebar. See KSR, 550 U.S. at 420 ("[a] person of ordinary skill is also a person of ordinary creativity, not an automaton."). Because a person of ordinary skill in the art would recognize that modifying the mounting arrangement of Heath's brake apparatus4 to utilize Arnold's mounting anangement5 would simply be a substitution of one mounting arrangement for another, and because Appellants have not alleged that such a modification would be beyond the level of skill in the art, we agree with the Examiner that this modification would have been obvious. See id. at 4 Heath discloses securing a hydraulic brake cylinder inside a handlebar using tubular clip G and small screw g3. Heath 4, 11. 5-8. 5 An10ld discloses securing a brake actuator inside a handlebar using inclined surfaces 38, 42 that, when pulled together by clamping screw 50, move radially and press against the inside of handlebar tube 16. Arnold 4, 11. 1-6. 11 Appeal2014-001589 Application 12/535,703 416 ("when [an application] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result") (citing United States v. Adcans, 383 U.S. 39, 50-51 (1966)). As such, we are not persuaded that the Examiner's proposed modification of Heath's brake apparatus would render Heath inoperable. Appellants raise an additional argument in the Reply Brief that was not presented in the Appeal Brief. See Reply Br. 7 ("the applied art clearly teaches away"); compare Appeal Br. 10-13. This argument is not timely, and Appellants do not present any evidence or explanation to show good cause why this argument should be considered by the Board at this time. See 37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board ... unless good cause is shown."). For the above reasons, we sustain the Examiner's rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Heath and Arnold. Claim 10 falls with claim 9. DECISION The decision of the Examiner to reject claims 1, 3, 7-10, and 12, is AFFIRMED. 12 Appeal2014-001589 Application 12/535,703 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation