Ex Parte OISHI

Patent Trial and Appeal BoardApr 28, 2016

12580664 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/580,664 10/16/2009 22919 7590 05/02/2016 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 FIRST NAMED INVENTOR Toshinari OISHI 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-US095167 1844 EXAMINER LIU,HENRYY ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): mailpto@giplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHINARI OISHI Appeal2013-010219 Application 12/580,664 Technology Center 3600 Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Toshinari Oishi (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject: (1) claims 1-3, 5, and 6 under 35 U.S.C. Â§ 102(b) as anticipated by Kamada '767 (US 2006/0154767 Al; pub. July 13, 2006); and (2) claims 4 and 7-12 under 35 U.S.C. Â§ 103(a) as unpatentable over Kamada '767 and Kamada '338 (US 6,340,338 Bl; iss. Jan. 22, 2002). We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing in accordance with 37 C.F.R. Â§ 41.47 was held on April 21, 2016. We REVERSE. Appeal2013-010219 Application 12/580,664 CLAIMED SUBJECT MATTER The claimed subject matter "relates [to] a sprocket mounted to a wheel of a bicycle, in which the sprocket has a teeth arrangement that provides smooth reliable shifting." Spec. para. 1; Figs. 2, 4, 5. Claim 1, the sole independent claim, is representative of the claimed subject matter and recites: 1. A bicycle sprocket comprising: a sprocket body having a center rotational axis; and a plurality of sprocket teeth extending radially outward from a root circle of the sprocket body with the sprocket teeth being circumferentially spaced around the outer periphery of the sprocket body, the sprocket teeth including at least one shift assist tooth that assists in a shifting operation from the bicycle sprocket to a smaller sprocket, the at least one shift assist tooth having a maximum radial height as measured from the root circle of the sprocket body, the maximum radial height of the at least one shift assist tooth being larger than a maximum radial height of a majority of remaining ones of the sprocket teeth as measured from the root circle of the sprocket body, and the at least one shift assist tooth having a radially inclined surface sloping toward the smaller sprocket as the radially inclined surface approaches radially toward the center rotational axis. Claims 1-3, 5, and 6 ANALYSIS Anticipation by Kamada '767 Independent claim 1 recites, in relevant part, "the sprocket teeth including at least one shift assist tooth that assists in a shifting operation from the bicycle sprocket to a smaller sprocket." Appeal Br. 20, Claims App. The Examiner finds Kamada '767 teaches "a plurality of sprocket teeth ( 54d) ... the sprocket teeth including at least one shift assist tooth 2 Appeal2013-010219 Application 12/580,664 (54a') that assists in a shifting operation from the bicycle sprocket to a smaller sprocket." Ans. 3--4; see also Final Act. 2. The Examiner further finds that "Paragraph [30 of Kamada '767] states that [tooth] 54a is the same as [tooth] 54a' except for the tooth radius." Id. at 10; see also Final Act. 9. Appellant contends that independent claim 1 of the subject application "requires at least one shift assist tooth ... that assists in a shifting operation from the bicycle sprocket to a smaller sprocket (i.e., an upshifting operation in a set of rear sprockets)." Appeal Br. 6. Appellant further contends that "the downshift assist tooth of Kamada '767 is not used for an upshift operation." Id. at 7. Appellant concludes that "[t]he Examiner erroneously relies on the structure of a downshift assist tooth in Kamada '7 67 to reject the claimed shift assist tooth designed to assist in an upshifting operation (i.e., a shifting operation from a larger sprocket to a smaller sprocket)." Id. at 6. Appellant's argument is persuasive. At the outset, the Specification differentiates between what constitutes an "upshift operation" and a "downshift operation." In particular, the Specification describes an "upshift operation" to mean "when the chain is moved from a large sprocket to the next smaller sprocket"; whereas, a "downshift operation" is described to mean "when the chain is shifted from a small sprocket to the next larger sprocket." Spec. para. 47; see also id. at paras. 51, 52; Fig 2. Where an explicit definition is provided by the applicant for a term, the definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). In this case, upon review of Appellant's Specification, a skilled artisan would recognize that movement of the bicycle chain from a large sprocket to a smaller 3 Appeal2013-010219 Application 12/580,664 sprocket as claimed constitutes an "up shift operation." We agree with the Examiner that Kamada '767 teaches that "[t]he structure of shift assist tooth 54a' is the same as shift assist tooth 54a." Kamada '767, para. 30; see also Ans. 10; Final Act. 9. However, Kamada '767 also teaches that "[e]ach shift assist tooth 54a is configured to assist the shifting of chain 18 from smaller diameter sprocket 10 to larger diameter sprocket 14." Id. at para. 23 (italics added); see also id. at paras. 20, 29, 32; Appeal Br. 9. In other words, shift assist tooth 54a' of Kamada '767 is designed to assist in moving the bicycle chain during a "downshift operation" (i.e., moving the bicycle chain from a smaller sprocket to a larger sprocket). The Examiner does not direct us to any discussion in Kamada '7 67 that teaches moving the bicycle chain during an "upshift operation" (i.e., moving the bicycle chain from a larger sprocket to a smaller sprocket). See Ans. 3--4, 10; see also Final Act. 2-3, 9. Nor does the Examiner establish that downshift assist tooth 54a' of Kamada '767 can necessarily be used as an upshift assist tooth as claimed. See id.; see also Final Act. 2-3, 9; Reply Br. 3. As such, the Examiner fails to establish by a preponderance of the evidence that Kamada '7 67 teaches at least one shift assist tooth that assists in a shifting operation from the bicycle sprocket to a smaller sprocket, as required by the claims. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-3, 5, and 6 as anticipated by Kamada '767. Obviousness over Kamada '767 and Kamada '338 Claims 4 and 7-12 The Examiner's rejection of claims 4 and 7-12 as unpatentable over Kamada '767 and Kamada '338 is based on the same unsupported finding 4 Appeal2013-010219 Application 12/580,664 discussed above with respect to independent claim 1. See Ans. 5-10; see also Final Act. 4--8. The Examiner does not rely on Kamada '338 to remedy the deficiency of Kamada '767. Accordingly, for similar reasons, we do not sustain the Examiner's rejection of claims 4 and 7-12 as unpatentable over Kamada '7 6 7 and Kamada '3 3 8. DECISION We REVERSE the decision of the Examiner to reject claims 1-12. REVERSED 5