Shimano Inc.

Patent Trials and Appeals Board

Feb 10, 2022

2021004987 (P.T.A.B. Feb. 10, 2022)

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. 15/684,606 08/23/2017 Shouta SUYAMA SN-US175402 5486 22919 7590 02/10/2022 GLOBAL IP COUNSELORS, LLP DAVID TARNOFF 1233 20TH STREET, NW SUITE 600 WASHINGTON, DC 20036-2680 EXAMINER CAMPOS, JR, JUAN J ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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 SHOUTA SUYAMA, ATSUHIRO EMURA, and KENTA NAKAMURA Appeal 2021-004987 Application 15/684,606 Technology Center 3600 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. KERINS, 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 2, 3, 5, and 7-17, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). A video oral hearing was conducted on January 31, 2022, with Wen Xie, Esq., appearing on behalf of Appellant. We REVERSE. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Shimano Inc. as the real party in interest. Appeal Br. 3. Appeal 2021-004987 Application 15/684,606 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a bicycle rear derailleur. Claim 3 is illustrative, and is reproduced below: 3. A bicycle rear derailleur comprising: a base member configured to be mounted to a bicycle frame of a bicycle at a single frame mounting axis such that a posture of the bicycle rear derailleur with respect to the bicycle frame is adjustable about the single frame mounting axis, the single frame mounting axis being spaced from a hub axis of the bicycle by a frame linear distance that is equal to or smaller than forty-two millimeters; a chain guide including a first pulley rotatably arranged around a first pulley axis in a first pulley plane; a movable member pivotally supporting the chain guide about a pivot axis, the movable member including a resistance applying mechanism applying resistance to a rotational movement of the chain guide; and a first link member movably coupled to the base member at a first link axis and movably coupled to the movable member at a second link axis to laterally move the chain guide relative to the base member between a first lateral position and a second lateral position, the first lateral position being closer to a bicycle center plane of the bicycle frame than the second lateral position in a state where the bicycle rear derailleur is mounted to the bicycle frame, the first link axis and the second link axis being more vertical than horizontal with respect to the pivot axis in a state where the bicycle rear derailleur is mounted to the bicycle frame and as viewed from a rear side of the bicycle, the first pulley plane intersecting the first link member in a state where the chain guide is located at the second lateral position, the single frame mounting axis being spaced from the pivot axis by a derailleur linear distance that is equal to or smaller than one hundred millimeters in a state where the chain guide is positioned at the first lateral position. Appeal 2021-004987 Application 15/684,606 3 THE REJECTIONS The Examiner rejects: (i) claims 2, 3, 5, 7-13, and 16 under 35 U.S.C. § 103 as being unpatentable over Watarai (US 2007/0202977 A1, published Aug. 30, 2007) in view of Shimano (US 4,406,643, issued Sept. 27, 1983) and Ando (US 5,624,335, issued Apr. 29, 1997); (ii) claims 14 and 15 under 35 U.S.C. § 103 as being unpatentable over Watarai in view of Shimano, Ando, and Yamaguchi (US 2013/0079184 A1, published Mar. 28, 2013); and (iii) claim 17 under 35 U.S.C. § 103 as being unpatentable over Watarai in view of Shimano, Ando, and Morse (US 3,748,916, issued July 31, 1973). ANALYSIS Claims 2, 3, 5, 7-13, and 16--§ 103--Watarai/Shimano/Ando The Examiner finds that Watarai discloses a rear derailleur including many of the limitations appearing in independent claim 3, but does not disclose that its first and second link axes (P3, P4) about which first link member (166) pivot, are oriented in a more vertical than horizontal disposition relative to its pivot axis (238, Fig. 1). Non-Final Act. 4, 7. The Examiner cites to Ando as disclosing a rear derailleur having a first link member (8) with pivot axes (at junctures of first link member with base member 6 and movable member 4) that are oriented in a more vertical than horizontal disposition relative to pivot axis (P, Fig. 2). Id. at 7 (citing Fig. 4a, Fig. 2). The Examiner concludes that it would have been obvious modify the rear derailleur of Watarai in view of the teachings of Ando such that the first and second link axes are more vertical than horizontal with Appeal 2021-004987 Application 15/684,606 4 respect to the pivot axis, to provide an arrangement “as taught by Ando, and/or minimize the lateral range of movement of the derailleur needed for chain guiding operations.” Id. at 7. We wish to note at the outset that it is unclear from Appellant’s Specification as to what significance (e.g., benefit, advantage) the “more vertical than horizontal” orientation of the first and second link axes has, relative to the overall construction and operation of the claimed rear derailleur. That being said, we are unable to sustain the rejection, in that it is lacking in rational underpinnings. The Examiner’s finding that the first and second link axes identified by the Examiner in Ando are in a more vertical than horizontal orientation relative to its pivot axis is not supported by the Ando disclosure. The Examiner appears to rely on the generally vertical orientation of link member 8 itself, rather than the axes (first and second link axes) that it pivots around, as providing the teaching of “more vertical than horizontal.” This is borne out in the Examiner’s response to Appellant’s arguments, which states that “the modification of Watarai in view of Ando of making the first link axis and the second link axis more vertical than horizontal . . . would only seem to require a structural reorientation of the first link member and second link member [of Watarai] to be more vertical than horizontal with respect to the pivot axis.” Ans. 13. Claim 3, however, does not call for a first link member (or any other link member) to be in a more vertical than horizontal orientation, but rather that limitation applies to the first and second axes about which the first link Appeal 2021-004987 Application 15/684,606 5 member pivots. It can be seen in Figure 4A of Ando,2 which the Examiner relies upon, that, although link 8 itself is oriented more vertically than horizontally relative to the derailleur pivot axis (a horizontal line, see Fig. 2, “P”), the axes about which link 8 pivots (unnumbered, but represented by circles near the top and bottom of the link) appear to extend substantially horizontally in and out of the plane of the page. Accordingly, the Examiner’s finding that these axes are more vertically than horizontally oriented is in error, and the rejection relying on the erroneous finding thus lacks rational underpinnings. As such, the rejection of claim 3, and of claims 2, 5, 7-13, and 16 depending therefrom, is not sustained. Claims 14 and 15--§ 103--Watarai/Shimano/Ando/Yamaguchi Claims 14 and 15 depend indirectly from claim 3. The Examiner does not rely on Yamaguchi in any manner that overcomes the deficiencies of the rejection of claim 3 as being unpatentable over Watarai, Shimano, and Ando. The rejection is not sustained. Claim 17--§ 103--Watarai/Shimano/Ando/Morse Claim 17 depends from claim 3. The Examiner does not rely on Morse in any manner that overcomes the deficiencies of the rejection of claim 3 as being unpatentable over Watarai, Shimano, Ando, and Morse. The rejection is not sustained. CONCLUSION The rejections of claims 2, 3, 5, and 7-17 under 35 U.S.C. § 103 are reversed. 2 Rotated 90° clockwise from its original orientation at Sheet 4 of 5 in the printed patent, see Appeal Br. 22. Appeal 2021-004987 Application 15/684,606 6 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 5, 7- 13, 16 103 Watarai, Shimano, Ando 2, 3, 5, 7- 13, 16 14, 15 103 Watarai, Shimano, Ando, Yamaguchi 14, 15 17 103 Watarai, Shimano, Ando, Morse 17 Overall Outcome 2, 3, 5, 7- 17 REVERSED