Ex Parte Matsushita et al

Patent Trial and Appeal Board

Mar 10, 2016

12535703 (P.T.A.B. Mar. 10, 2016)

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
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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.
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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.
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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.
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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
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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
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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
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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
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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
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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.
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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.
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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
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