Ex Parte TETSUKA

Patent Trial and Appeal BoardOct 31, 2018

13077037 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/077,037 03/31/2011 22919 7590 11/02/2018 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 FIRST NAMED INVENTOR Toshia TETSUKA 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-US115037 4858 EXAMINER DIAZ, THOMAS C ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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 TOSHIO TETSUKA Appeal2017-002991 Application 13/077,037 Technology Center 3600 Before STEFAN STAICOVICI, LYNNE H. BROWNE, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Toshio Tetsuka ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 103(a): (1) claims 1-12 and 15 as unpatentable over Tetsuka '131 (US 2008/0087131 Al, published Apr. 17, 2008); and (2) claims 13 and 14 as unpatentable over Tetsuka '131 and Tetsuka '856 (US 2008/0168856 Al, published July 17, 2008). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2017-002991 Application 13/077 ,037 CLAIMED SUBJECT MATTER The claimed subject matter "relates to a bicycle brake and shift operating device." See Spec. ,r 1, Figs. 3, 8, 9. Claims 1 and 13 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A bicycle brake and shift operating device comprising: a base member including a grip portion and a mounting portion being configured to be mounted to a bicycle handlebar; a brake lever pivotally connected to the base member at a pivot axis, the brake lever including an inward facing surface and an outward facing surface, the inward facing surface facing toward a center plane which perpendicularly extends from a center portion of the bicycle handlebar with respect to a longitudinal direction of the bicycle handlebar when the base member is mounted on the bicycle handlebar; a first shift switch including a slot and a first operating portion mounted on the inward facing surface of the brake lever, the first shift switch being arranged to electrically control a shifting device, the first operating portion being adjustably arranged in upward and downward directions transverse to an opening direction of the slot in a state where the bicycle brake and shift operating device is mounted to the bicycle handlebar. 2 Appeal2017-002991 Application 13/077 ,037 ANALYSIS Obviousness over Tetsuka '131 Claims 1-12 and 15 Appellant does not offer arguments in favor of dependent claims 2- 12, and 15 separate from those presented for independent claim 1. See Appeal Br. 8-11. 1 We select claim 1 as the representative claim, and claims 2-12 and 15 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 1 is directed to a bicycle brake and shift operating device that includes "a first shift switch including a slot and a first operating portion mounted on the inward facing surface of the brake lever," "the first operating portion being adjustably arranged in upward and downward directions transverse to an opening direction of the slot in a state where the bicycle brake and shift operating device is mounted to the bicycle handlebar." Appeal Br. 13, Claims App. The Examiner finds Tetsuka '131 discloses a bicycle brake and shift operating device including "a first shift switch (120 or 122) including a slot (33b) and a first operating portion (120a or 122a)," wherein the first operating portion is adjustably arranged in upward and downward directions transverse to an opening direction of the slot in a state where the bicycle brake and shift operating device is mounted to the bicycle. See Final Act. 2- 3. 2 In particular, the Examiner finds (1) Tetsuka '131 "is capable of providing said adjustability since the switch has a slot 33b which allows for transverse adjustability, ... with respect to the opening direction of the slot"; (2) slot 33b of Tetsuka '131 "is elongated in a direction which is 1 Appeal Brief ("Appeal Br."), filed Sept. 8, 2016. 2 Final Office Action ("Final Act."), dated Apr. 13, 2016. 3 Appeal2017-002991 Application 13/077 ,037 transverse to the opening direction of the slot ... and therefore, at the very least the first operating portion would be adjustably arranged in the upward or downward directions which are transverse to the opening direction of the slot"; (3) the recited claim language "is considered functional language and the only structure capable of performing the function according to the claim is the slot, see MPEP 2114"; and (4) Appellant "has not specified any further particular structure responsible for said function." Final Act. 3; see also id., the Examiner's annotated version of Tetsuka '131 's Figure 7. The Examiner also finds Tetsuka '131 "fails to explicitly show the first switch being mounted on the inward facing surface of the brake lever." Final Act. 3. However, the Examiner reasons Tetsuka '131 "teaches and/or suggests that the positions and/ or attitudes of the gearshift operating parts can be adjustable or movable (see paragraph 82, 84) in accordance with the physique or preferences of the rider, so that the feeling of the fit between the body of the rider and the bicycle is improved." Id. at 4. The Examiner notes "the switching members [ of Tetsuka '131] are part [ ofJ the gear operating parts" and "paragraph 85 [ of Tetsuka '131] elaborates on how [ the switching members of the gear operating parts] can be moved around." Id. The Examiner concludes it would have been obvious to a person of ordinary skill in the art to modify the positioning of first switch ( 120, 122) of T etsuka ' 131 "to be mounted on an inward facing surface of the brake lever in accordance with the physique or preferences of the rider, so that the feeling of the fit between the body of the rider and the bicycle is improved" and "such a rearrangement would provide the same predictable result of allowing the rider to actuat[e] the shifting operation of the bicycle." Id. 4 Appeal2017-002991 Application 13/077 ,037 The Examiner also concludes "it would have been obvious to rearrange the switch to be in a different location, since it has been held that rearranging parts of an invention involves only routine skill in the art." Id. ( citing In re Japikse, 86 USPQ 70). Specifically, the Examiner reasons "the first switch assembly is easily movable and attachable anywhere on the brake/shifting device as evident by its construction and by the state of the prior art which as evidenced by [Tetsuka '131 disclosing] that switches can be arranged in numerous places in bicycle shift assemblies." Final Act. 4. Appellant contends (1) as the drawings of Tetsuka '131 "are not to scale, and the specification [ of Tetsuka '131] is silent with regard to the switching member 122 adjustability, there is simply no way to determine whether the switching member 122 could be adjusted"; and (2) as there are no drawings in Tetsuka '131 "illustrating the positioning of screws in the slots, and the drawings are not to scale, there is simply no evidence that the switching member 122 is configured to be adjusted, as required by the slots of independent claim l of [the subject] application." Reply Br. 4--5; 3 see also Appeal Br. 10-11. We acknowledge patent drawings cannot be relied upon to disclose the precise proportions of elements if they are not designated in some way as being drawn to scale. Hockerson-Halberstadt, Inc. v. Avia Group Int 'l, 222 F.3d 951, 956 (Fed. Cir. 2000). However, in this case, the Examiner correctly notes the drawings of Tetsuka '131 "need not be to scale" as "[ n Jo explicit dimensions are relied upon since none [are] required by" claim 1, in that claim 1 "does not include any further limiting recitations regarding 3 Reply Brief ("Reply Br."), filed Dec. 12, 2016. 5 Appeal2017-002991 Application 13/077 ,037 specifics of the slot (dimensions, size, etc.) and/or the fastener used in conjunction with the slot." Ans. 4--5. 4 The Examiner also correctly notes "Tetsuka '131 explicitly discloses a slot 33b ... which is positioned on the switch." Id. at 4; see also id. at 5 ("Tetsuka '131 ... discloses 33b as a slot in the written description."). In particular, Tetsuka '131 discloses Each of the attachment car parts 33a has a slot 33b through which fastening spring members can pass. The first switching member 120a ( or fourth switching member 122a) is fastened to the base member 117R ( or base member 117L) by passing a spring member through the slot 33b, and screwing this spring member into the base member 117R ( or base member 117L). For example, as shown in FIGS. 2 and 3, the attachment ear parts 33a that have these slots 33b are disposed at an inclination so that these parts drop downward toward the rear. As a result, the first switching member 120a ( or fourth switching member 122a) is fastened at an inclination so that the position is adjustable. For example, it is preferable that the range over which the position is adjustable be about 3 mm to 10 mm. The first switching member 120a ( or fourth switching member 122a) used for upshifting ( or downshifting) can thereby be disposed in accordance with the size of the rider's hand or the preferences of the rider. Tetsuka '131 ,r 61 (emphases added); see also id. at Figs. 2, 3, 6, and 7. Thus, a preponderance of the evidence supports the Examiner's position that the slotofTetsuka '131 (i.e., 33b) "read[s] on the claimed language [ of claim 1] and ha[ s] the functionality thereof." See Final Act. 11-12; see also id. at 2-3; Ans. 4--6. 5 Appellant does not provide persuasive evidence or argument to the contrary. 4 Examiner's Answer ("Ans."), dated Oct. 13, 2016. 5 Compare paragraph 61 of Tetsuka '131 with paragraph 37 of the subject application. We refer to amended paragraph 37 of the Specification filed January 11, 2012. 6 Appeal2017-002991 Application 13/077 ,037 Appellant contends "there is simply no suggestion of moving the switching members 120 and 122 from a fixed bracket to a pivotable operating member" and "[ m ]oving the switching member 122 to the inward facing surface of the brake lever 116L or 116R would not have been obvious." Appeal Br. 8-9. In particular, Appellant contends (1) "moving the switch as suggested by the Examiner would have required a substantial reconstruction of the [button configuration and connection of the device of Tetsuka '131] such that the results would not have been predictable"; and (2) "there is no evidence or explanation of whether the device would operate properly due to the pivoting design of the brake lever 116L or 116R. Accordingly, ... it would not have been obvious to move the switching members 120 and 122 to a brake lever." See Appeal Br. 8-9; see also Reply Br. 4 As an initial matter, the Examiner correctly notes "the only evidence presented [by Appellant] is Appellant['s] opinion on the matter." Ans. 8. Stated differently, Appellant's contentions are essentially unsubstantiated attorney argument of little probative value. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (explaining that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). In this case, the Examiner finds "relocation of the switch to ... the inward facing surface of the lever .... would be reasonable since Tetsuka '131 already shows how a switch could be mounted to the pivoting lever (i.e. switch 12 la) and thus the results would indeed be predictable." Ans. 3. Appellant does not apprise us of error in this finding of the Examiner. In addition, Tetsuka '131 discloses that lever-type second switching member 121 a, which is located on brake lever 116R, "may be constructed so that the 7 Appeal2017-002991 Application 13/077 ,037 position can be adjusted by means of a slot in the same manner as the first switching member 120a." Tetsuka '131 ,r 65 ( emphasis added), Fig. 2. Appellant contends that although paragraph 82 of T etsuka ' 131 "states that the respective gearshift operating parts can be disposed in accordance with the physique or preferences of the rider, Tetsuka '131 is clearly referring to disposing the switching members on the base members." Reply Br. 4. In this case, the Examiner correctly notes paragraph 85 of Tetsuka '131 discloses the switching members of the gearshift operating parts "may be disposed on either the brake operating devices or the handlebar main body." See Tetsuka '131 ,r 85; see also Final Act. 4; Ans. 3. Further, the Examiner takes the position that the brake operating devices of Tetsuka '131 "represent[] the brake assembly as a whole." Ans. 3. Appellant does not apprise us of error in these findings of the Examiner. In addition, based on Tetsuka '131 's disclosure in paragraphs 82, 84, and 85, the Examiner properly reasons "the gearshift operating parts (i.e. switch 120) could have their positions and/or attitudes adjustable and disposed in accordance with physique or preferences of the rider," which "makes sense since different riders have different hand sizes or preferences for different gripping positions which consequently would require the switches to be preferably located in different locations for each rider that has different preferences." See Ans. 2--4; see also Tetsuka '131 ,r,r 82, 84, and 85. 6 The Examiner's findings are sound and supported by a preponderance of the evidence. 6 We note Tetsuka '131 discusses disposing first and third gearshift operating parts 120 and 122 on the inside surface of the base ends of base members 117R and 117L. Tetsuka '131 ,r 84. 8 Appeal2017-002991 Application 13/077 ,037 Appellant does not provide persuasive evidence or argument apprising us of Examiner error. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as unpatentable over Tetsuka '131. Accordingly, we sustain the Examiner's rejection of claim 1 as unpatentab le over T etsuka ' 131. We further sustain the rejection of claims 2-12 and 15, which fall with claim 1. Obviousness over Tetsuka '131 and Tetsuka '856 Claims 13 and 14 Appellant merely recites claim language from claim 13 and contends (1) "[a]s stated above [with claim 1]," Tetsuka '131 "fails to disclose or render obvious [the recited] structure" and (2) Tetsuka '856 "fails to overcome the deficiencies" of Tetsuka '131. Appeal Br. 11. "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2011); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. Â§ 4I.37(c)(l)(iv) as requiring "more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). As discussed above, we find no deficiencies in the Examiner's rejection of claim 1 as unpatentable over Tetsuka '131. Therefore, for the reasons stated above 9 Appeal2017-002991 Application 13/077 ,037 with respect to claim 1, we also sustain the Examiner's rejection of claims 13 and 14 as unpatentable over Tetsuka '131 and Tetsuka '856. DECISION We AFFIRM the decision of the Examiner to reject claims 1-15 under 35 U.S.C. Â§ 103(a). 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)(l )(iv). AFFIRMED 10