Shimano Inc.

Patent Trials and Appeals Board

Aug 25, 2021

2020005802 (P.T.A.B. Aug. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/054,877 02/26/2016 Takashi YAMAMOTO SN-US156573 4173
22919 7590 08/25/2021
GLOBAL IP COUNSELORS, LLP
DAVID TARNOFF
1233 20TH STREET, NW
SUITE 600
WASHINGTON, DC 20036-2680
EXAMINER
DODD, RYAN P
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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 TAKASHI YAMAMOTO,
HIROYUKI URABE, and YUSUKE NISHIKAWA

Appeal 2020-005802
Application 15/054,877
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22, which constitute all the claims
pending in this application.2 See Final Act. 2 (“Claims 1–22 are currently

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Shimano
Inc.” Appeal Br. 3.
2 Claims 9, 18, and 20 are “objected to” and “could be allowable if
rewritten” as stated by the Examiner. Final Act. 7.
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being considered”). Appellant’s counsel presented oral argument on August
10, 2021. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a bicycle drive unit.” Spec.
¶ 2. Apparatus claim 1 is the sole independent claim. Claim 1 is
representative of the claims on appeal and is reproduced below.
1. A bicycle drive unit comprising:
an input rotational shaft;
an output part:
a transmission mechanism comprising at least two shift
stages and configured to change a speed of a rotational input
that is input from the input rotational shaft and output the
rotational input to the output part;
an assist motor that is coupled to a power transmission
path from the input rotational shaft to the output part and that is
driven according to a manual drive force; and
a switching mechanism, which can switch a gear
changing state of the transmission mechanism by using a
rotational force of the assist motor.
EVIDENCE
Name Reference Date
Hino et al. (“Hino”) US 2013/0095971 A1 Apr. 18, 2013
REJECTION
Claims 1–8, 10–17, 19, 21, and 22 are rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Hino.3

3 When expressing the sole rejection under which this appeal is taken, the
Examiner does not list claim 10 in the heading of the rejection. See Final
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ANALYSIS
Independent claim 1 (and hence dependent claims 2–8, 10–17, 19, 21,
and 22) recites a transmission mechanism, an assist motor, and a switching
mechanism that can change a gear state of the transmission mechanism “by
using a rotational force of the assist motor.” See Appeal Br. 5, 16 (Claims
Appendix). The Examiner finds this teaching in Hino. See Final Act. 2–3.
In reaching this finding, the Examiner correlates “a controller, see paragraph
45,” along with “a sensor: paragraph 43, one-way clutches 50, 52, 72, 84,
cams 80, 81, turning member 94, controllers 73, 85, operating part 90,
holding member 88, etc.,” as well as “one way clutch 132,” as the recited
“switching mechanism” that employs the motor’s rotational force to change
a gear state of the transmission mechanism. Final Act. 3; Ans. 10, 11.
These items identified by the Examiner as the recited “switching
mechanism” are all subcomponents of Hino’s transmission mechanism body
140b, but for one way clutch 132, the controller described in paragraph 45,
and the sensor described in paragraph 43. See Hino Figs. 2, 3, 5–13. These
latter three items will be discussed in more detail below.
Appellant disagrees that Hino teaches the limitation of changing a
gear state of the transmission mechanism “by using a rotational force of the
assist motor.” See Appeal Br. 7–12; Reply Br. 4–5. Appellant contends that

Act. 2. Also, claim 10 is not listed among those claims found to be
“objected to.” Final Act. 7. Further, Appellant acknowledges that only
“[c]laims 9, 18, and 20 are indicated as containing allowable subject matter.”
Appeal Br. 2. Thus, as the subject matter of claim 10 is discussed in the
body of the rejection, we understand that claim 10 is also subject to the
above rejection, and that its omission was an oversight. See Final Act. 5
(“wherein the assist motor is connected to one of the output body and an
upstream side of the output body in the power transmission path (Fig. 3).”).
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because the assist motor 120 of Hino does not transmit torque to
the transmission mechanism body 140b, as described in
paragraph [0090] of Hino, the switching mechanism of Hino
cannot switch a gear changing state of the transmission
mechanism using a rotational force of the assist motor 120, as
recited in Appellant's independent claim 1.
Appeal Br. 7; see also id. at 8 (“assist motor 120 does not facilitate a shifting
operation in Hino”), 9–10 (the “torque path from the assist motor 120 does
not pass through the transmission mechanism main body 140b”), 11, 12;
Reply Br. 4 (“[b]ecause none of the components of Hino alleged to
correspond to the recited switching mechanism are on a motor output path of
the assist motor, the gear changing state of the transmission mechanism
cannot be switched using the rotational force of the assist motor”).
Paragraph 90 of Hino is explicit as to the path that torque (i.e., “a
rotational force”) from assist motor 120 travels before reaching output
sprocket 103. See Hino ¶ 90. Nowhere in Hino is there any indication that
motor torque passes through transmission mechanism body 140b (or its
subcomponents identified above). Instead, Hino teaches that torque “from a
pedaling force of a rider is transmitted” to and through transmission
mechanism 140b before reaching output sprocket 103. Hino ¶ 90. In other
words, and in accordance with Hino’s teachings, the motor torque flow path
can be said to bypass transmission mechanism 140b, which instead is acted
upon by the rider’s pedal (manual) torque.
As to the one-way clutch 132 identified by the Examiner above (see
Hino Fig. 2), this clutch 132 works in tandem with combining member 131
to receive both motor and manual torque forces and deliver same to the
output sprocket 103. See Hino ¶¶ 89, 90. There is no indication that Hino’s
one-way clutch 132, even if it receives “rotational force of the assist motor,”
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ever serves to change gears in Hino’s transmission mechanism as per claim
1. See also Ans. 11–12.
As to the controller described in Hino paragraph 45 identified by the
Examiner above, this controller, which is “not shown in the drawings,” is
described as controlling “the inverter according to a detected pedaling force
and a detected bicycle speed.” Hino ¶ 45. There is no indication that Hino’s
“controller,” even if part of the recited “switching mechanism” as expressed
by the Examiner (Final Act. 3), is operated on by a rotational force of the
assist motor in order to switch a gear in the transmission mechanism.
As to the sensor that the Examiner references via paragraph 43 of
Hino, this paragraph teaches that
torque detecting device detects a torque acting on the crank axle
102 and when the detected value exceeds a set value, the
assistance motor 120 is started to generate an assisting torque
corresponding to the amount by which the detected torque is
insufficient.
Hino ¶ 43. Hence, as understood, this “sensor” ascertains when to generate
“assisting torque” from the motor, and is not employed for the purpose of
changing a gear state of the transmission mechanism as recited in claim 1.
The Examiner further states, “[t]he sensor of Hino is on the crankshaft (see
paragraph 43), which is directly connected to the motor.” Ans. 11. Even if
this is the location of Hino’s sensor, the Examiner still has failed to
adequately explain how such a sensor “can switch a gear changing state of
the transmission mechanism by using a rotational force of the assist motor”
as recited.
The Examiner also replicated Figure 2 of Hino and annotated how
motor torque is transmitted through lower crankshaft 102 to upper shaft 12
and thence to combining member 131 and output sprocket 103. See Ans. 12.
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The Examiner indicates that the rotational torque from Hino’s motor 120 is
delivered to bearings 124a and 124b, and that these bearings, in turn, pass
the rotational torque onto crankshaft 102, which they surround. As best we
can tell, however, these bearings (intermediate crankshaft 102 and motor
120) operate in the normal fashion by permitting crankshaft 102 and motor
120 to rotate independently of each other. See Hino ¶ 45. It is not
sufficiently explained by the Examiner how these bearings 124 operate
differently, such that rotation from the motor is passed onto the crankshaft
through these bearings. Further, the Examiner’s annotations of torque flow
is contrary to how Hino specifically describes the flow of torque from motor
120. See Hino ¶ 90.
Accordingly, and based on the record presented, the Examiner has not
established by a preponderance of the evidence that Hino anticipates claim
1, and hence also dependent claims 2–8, 10–17, 19, 21, and 22. We reverse
the Examiner’s rejection of these claims as being anticipated by Hino.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–17,
19, 21, 22
102(a)(1) Hino 1–8, 10–17,
19, 21, 22
REVERSED