Akira Inoue

Patent Trials and Appeals Board

Mar 3, 2020

13416114 - (D) (P.T.A.B. Mar. 3, 2020)

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.
13/416,114 03/09/2012 Akira INOUE SN-US110725 4162
22919 7590 03/03/2020
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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 AKIRA INOUE
____________

Appeal 2018-003932
Application 13/416,114
Technology Center 3600
____________

Before EDWARD A. BROWN, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

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. (filed Aug. 4, 2017) 3.
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Application 13/416,114

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CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent claims. Claim 1 illustrates the
claimed subject matter.
1. A bicycle pedal comprising:
a pedal axle;
a main pedal body rotatably supported on the pedal axle;
a coupling mechanism including a first cleat securing
member configured to be coupled to a front portion of a cleat
and a second cleat securing member that is rotatably attached to
the main pedal body about a pivot axis and is configured to be
coupled to a rear portion of the cleat, the second cleat securing
member including a cleat contacting surface;
a force exerting member operatively disposed between
the main pedal body and the second cleat securing member, the
force exerting member being configured to bias the second cleat
securing member in a cleat securing direction to contact the rear
portion of the cleat; and
a cleat movement restricting member disposed
underneath an end of the second cleat securing member as
viewed from an axial direction that is parallel to the pivot axis,
the end including the cleat contacting surface that is configured
to contact the cleat while the cleat is engaged with the second
cleat securing member, the cleat movement restricting member
being configured to restrict movement of the cleat in a rearward
direction, the cleat movement restricting member being further
configured and arranged relative to the coupling mechanism
such that the cleat movement restricting member guides the
cleat in an upward direction such that the cleat detaches from
the coupling mechanism during a cleat disengagement
operation in which the cleat detaches from the coupling
mechanism,
the cleat movement restricting member having a first
slanted surface that is configured to guide the cleat upward such
that the cleat detaches from the coupling mechanism.
Appeal Br. 20 (Claims App.).

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REJECTIONS
Claim 15 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1–15 are rejected under 35 U.S.C. § 102(b) as anticipated by
Peyre (US 5,423,233, issued June 13, 1995).
Claims 1–15 are rejected under 35 U.S.C. § 102(b) as anticipated by
Bryne (US 8,857,292 B2, issued Oct. 14, 2014).

ANALYSIS
Claim 15 as Indefinite
Appellant does not contest the rejection of claim 15 under 35 U.S.C.
§ 112, second paragraph. Appeal Br. 19. Accordingly, we sustain the
rejection.

Claims 1–15 as Anticipated by Peyre
As for claim 1, the Examiner finds that Peyre discloses a bicycle pedal
comprising, inter alia, a cleat movement restricting member (rear abutment
22) “having a first slanted face (figs 1 and 4) that is {configured to guide the
cleat upward such that the cleat detaches from the coupling mechanism}.”
Final Act. 4. The Examiner states that the use of brackets “{}” indicates that
“Peyre discloses a device that is identical, or substantially structurally
identical, to the device claimed, and thus anticipates the claim. Therefore,
Peyre is inherently capable of the claimed functions in the same way that the
claimed device is inherently capable of the claimed functions.” Id. at 6–7
(citing MPEP §§ 2112, 2114) (emphasis added). The Examiner makes
closely similar findings for claim 15, including that Peyre discloses, inter
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alia, a cleat movement restricting member 22 “{configured to restrict
movement of the cleat in a rearward direction} [and] . . . having a first
slanted surface (figs 1 and 4) that is {configured to guide the cleat in an
upward direction such that the rear portion of the cleat pushes against the
second cleat securing member to detach the cleat from the coupling
mechanism}.” Id. at 6.
Appellant disagrees with the Examiner’s finding that Peyre discloses
“the cleat movement restricting member having a first slanted surface that is
configured to guide the cleat upward such that the cleat detaches from the
coupling mechanism,” as recited in claim 1, or “a cleat movement restricting
member . . . having a first slanted surface that is configured to guide the
cleat in an upward direction such that the rear portion of the cleat pushes
against the second cleat securing member to detach the cleat from the
coupling mechanism,” as recited in claim 152. Appeal Br. 15. Appellant
contends that Peyre is silent about any structure that provides an upward
movement component to a cleat during a disengagement operation that
releases the cleat from a pedal body. Id. at 7.
Appellant specifically disagrees that Peyre’s rear abutment 22
corresponds to the claimed cleat movement restricting member. Appeal Br.
11. Appellant contends that Peyre only describes that rear abutment 22
prevents cleat plate 23 from moving in the longitudinal direction relative to
pedal body 1 (Reply Br. 6 (citing Peyre, col. 5, l. 30–col. 6, l. 1)), but is
silent about rear abutment 22 guiding or imparting any kind of upward
movement component to cleat plate 23 during its detachment from pedal

2 Herein, we also refer to these limitations in claims 1 and 15 as “the slanted
surface limitation.”
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body 1 (Appeal Br. 11). To the contrary, Appellant contends, rear abutment
22 is incapable of guiding plate 23 upward during detachment from pedal
body 1. Appeal Br. 11. According to Appellant, “the only ‘slanted portion’
of the rear abutment 22 is disposed far too spaced and too low to be able to
guide the plate 23 in an upward direction during a disengagement operation,
as claimed.” Id. at 12 (boldface omitted). Appellant provides an annotated
Figure 5 of Peyre as further explanation. Id. Appellant states, “during a
disengagement operation, any part of the rear abutment 22 that would be
able to provide any type of upward guidance, as claimed, is disposed too low
and would not be able to contact the cleat 23.” Id. (emphasis added).
In the Reply Brief, Appellant clarifies this position, stating “Appellant
meant to state that whatever portion of the rear abutment 22 that is
potentially capable of contacting the cleat plate 23, that portion of the rear
abutment 22 would not be capable of guiding the cleat upward as claimed in
claim 1.” Reply Br. 5 (emphasis added). Appellant provides a revised
annotated Figure 5 of Peyre with the revised annotation “Rear abutment 22
— the alleged ‘slanted face’ is not capable of guiding the cleat plate 23
upward.” Id. Appellant states that the revised annotation has been clarified
“to reinstate the point that the rear abutment 22 is disposed too low to
contact the cleat 23. Therefore, based on Appellant’s understanding of
Peyre, the rear abutment 22 does not contact the cleat plate 23 when the
device of Peyre is used as intended.” Id. (boldface omitted).
Appellant additionally contends that Peyre’s rear abutment 22 is
curved rearwardly and cleat plate 23 is curved forwardly to avoid
interference with cleat plate 23 during a disengagement operation. Appeal
Br. 12 (showing annotated Fig. 4 of Peyre). Appellant contends that, during
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a disengagement operation, cleat plate 23 pivots about a vertical axis and
rear abutment 22 is disposed rearward of the movement path of cleat plate
23 such that rear abutment 22 can only prevent rearward movement of cleat
plate 23. Id. at 13. Appellant further asserts that because the portion of rear
abutment 22 that contacts rear support surface 56 of plate 23, and also rear
support surface 56 itself, are perpendicular to the pivot direction of plate 23,
no upward movement can be imparted to plate 23 by the rear abutment 22.
Id. at 11–12.
The Examiner responds that claims 1 and 15 recite no specific
physical characteristics of the cleat movement restricting member that
differentiate it structurally from Peyre. Ans. 5. According to the Examiner,
claims 1 and 15 define the cleat movement restricting member entirely
functionally, but the functional limitation “guide” does not further describe
what the cleat movement restricting member is. Id. at 5–6. The Examiner
submits that “the claim does not recite specifically how the bicycle cleat of
the instant application is detached from the bicycle pedal in relation to any
specific unique structure.” Id. at 6.
The Examiner construes the term “guide” as requiring “a feature to
somehow, in some unspecified way, to direct, cause, or bring about
movement of the cleat in an upward direction.” Ans. 7 (underlining
omitted).3 The Examiner submits that “because the instant application relies
on the user of the device using his/her foot to rotate the cleat, the claim is

3 The term “guide” is used as a verb in claims 1 and 15. Appeal Br. 20, 24.
We note a dictionary definition of the verb “guide” is “to act as a guide to:
direct in a way or course.” Merriam-Webster’s Collegiate Dictionary 555
(11th. ed. 2003).
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sufficiently broad to include situations where the user of the device provides
the upward force to the cleat and the cleat movement restricting member
passively guides the cleat.” Id. at 8 (emphasis added).
The Examiner finds that Figure 2 of Peyre demonstrates that the cleat
movement restricting member 22 has a face directed upwards, and,
therefore, “the cleat movement restricting member (22) guides the cleat
upwards because the cleat movement restricting member (22) prevents the
cleat from moving rearward beyond the cleat movement restricting
member.” Ans. 8–9. According to the Examiner, “[t]he cleat movement
restricting member (22) limits movement of the cleat to only movement that
is directed in the upward direction along the Y-axis.” Id. at 9.
Additionally, the Examiner finds that rear abutment 22 in Peyre has a
“slanted surface,” as claimed. Ans. 10. Particularly, the Examiner finds that
the front curved surface of rear abutment 22 “diverges or is inclined relative
to the YZ-plane, which is the vertical plane.” Id. (see the Examiner’s
annotated Figure 4 of Peyre, which identifies the slanted surface “1SS”).
The Examiner submits that surface 1SS guides the cleat upwards along the
Y-axis. Id.
Appellant replies that the Examiner has not established that Peyre’s
device is capable of the claimed guiding function of the cleat movement
restricting member. Reply Br. 3. Appellant contends that the Examiner
must show that the corresponding components of Peyre “are made to
perform the guiding function. ‘Configured to’ in claims requires a structure
that is more than just capable of performing a function, but is actually made
to perform the function.” Id. (boldface omitted) (citing Aspex Eyewear, Inc.
v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012)). Appellant
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contends that Peyre’s disclosure shows that rear abutment 22 was made to
prevent longitudinal movement, not to guide the cleat upward, as required by
Aspex Eyewear. Id. at 6.
According to the Examiner, Appellant is “suggesting that the
functional limitation ‘guide’ is being used in place of specific structural
limitations that enable those functional limitations.” Ans. 6 (boldface
omitted). The Examiner states, “the claim merely recites ‘the cleat
movement restricting member guides the cleat in an upward direction’
(emphasis added), and thus Applicant’s arguments rely entirely on the
breadth of the interpretation of ‘guides.’” Id.
We disagree that Appellant’s argument relies entirely on the meaning
of “guides.” Ans. 6. Claim 1 recites “the cleat movement restricting
member having a first slanted surface that is configured to guide the cleat
upward such that the cleat detaches from the coupling mechanism.” Appeal
Br. 20 (Claims App.) (emphasis added). Claim 15 similarly recites “the
cleat movement restricting member having a first slanted surface that is
configured to guide the cleat in an upward direction such that the rear
portion of the cleat pushes against the second cleat securing member to
detach the cleat from the coupling mechanism.” Id. at 24 (Claims App.)
(emphasis added). Accordingly, these claims require that the cleat
movement restricting member has a first slanted surface, and that the first
slanted surface is configured to guide the cleat upward (claim 1) or in an
upward direction (claim 15). The “first slanted surface” is a structural
limitation. As for the phrase “configured to,” Aspex Eyewear addressed the
meaning of the phrase “adapted to,” explaining that the phrases “made to,”
“designed to,” and “configured to” are narrower meanings than “capable of.”
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Aspex Eyewear, 672 F.3d at 1349. We agree with Appellant that the phrase
“configured to” is a structural limitation that requires a structure that is more
than just “capable of performing” the function that follows it, but is actually
“made to” perform the function.
Regarding the structure and function of the cleat guiding structure,
Appellant references paragraph 34 of the Specification, which describes the
cleat movement restricting member 6 having a first slanted face 6c shown in
Figure 3. Reply Br. 11; Spec. ¶ 34. As described, the first slanted face 6c is
arranged and configured such that when the heel of a shoe is turned outward,
the rear portion 22b of the cleat 22 is guided upward by first slanted face 6c.
Spec. ¶ 34, Fig. 3. We agree with Appellant that, applying the proper
meaning of “configured to” in view of the Specfication, the claimed slanted
surface limitation recites structure, and not merely function. Reply Br. 11.
To the extent the Examiner did not address both of the limitations
“first slanted surface” and “configured to” in claims 1 and 15 as structural
limitations, the Examiner has not established that “Peyre discloses a device
that is identical, or substantially structurally identical, to the [claimed]
device,” as the Examiner finds. Final Act. 6 (emphasis added). The
Examiner’s position is that Peyre inherently (i.e., necessarily) discloses the
cleat movement restricting member, as claimed. However, Peyre appears to
provide no disclosure that describes or implies that rear abutment 22 has a
slanted surface configured to guide plate 23 upwardly such that it detaches
from the coupling mechanism. First, we agree with Appellant that the
curved surface of plate 23 appears to be located below the bottom of plate
23, and it is not apparent how plate 23 would even contact this curved
surface during disengagement of plate 23 from the pedal. See Reply Br. 5.
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Second, Peyre describes that “on each main face A, B of the pedal
body is provided a rear abutment 22, as considered in the travel direction F.
This rear abutment cooperates with the curved rear support surface 56 of the
plate.” Peyre, col. 5, ll. 39–42. Peyre describes the act of “stepping out of
the pedal,” explaining “[d]uring the course of this release, if a force
component occurs rearwardly in the longitudinal direction, this force
component is taken by the rear abutment 22.” Id. at col. 7, ll. 11–31.
Accordingly, we understand that, during “a cleat disengagement operation”
in Peyre, rear abutment 22 cooperates with curved rear support surface 56 of
plate 23 by taking up forces acting rearwardly in the longitudinal direction
during release of plate 23 from the pedal. This description does not indicate
that rear abutment 22 also guides plate 23 upward such that plate 23
detaches from a coupling mechanism of the pedal.
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotation marks omitted). Even assuming
that the curved front surface of Peyre’s rear abutment 22 can be considered a
“slanted surface,” as found by the Examiner, the Examiner does not provide
sufficient evidence or technical reasoning to establish that this curved front
surface, which is located and configured to take up forces acting rearwardly
in the longitudinal direction during release of plate 23 from the pedal,
necessarily also “is configured to guide the cleat upward such that the cleat
detaches from the coupling mechanism” during a cleat disengagement
operation in which plate 22 detaches from the “coupling mechanism.”
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Accordingly, we are not persuaded that Peyre inherently discloses the
claimed cleat movement restricting member.
For the foregoing reasons, we do not sustain the rejection of claims 1
and 15, or claims 2–14 depending from claim 1, as anticipated by Peyre.

Claims 1–15 as Anticipated by Bryne
As for claim 1, the Examiner finds that Bryne discloses, inter alia, a
cleat movement restricting member (forward crosslink 58, flange 82,
countersunk hole 84) “having a first slanted face (fig 7) that is configured
{to guide the cleat upward such that the cleat detaches from the coupling
mechanism}.” Final Act. 7–8.4 The Examiner makes closely similar
findings for claim 15, including, inter alia, that Bryne discloses a cleat
movement restricting member (forward crosslink 58, flange 82, countersunk
hole 84) “{configured to restrict movement of the cleat in a rearward
direction}, the cleat movement restricting member having a first slanted
surface (fig 7) that is {configured to guide the cleat in an upward direction
such that the rear portion of the cleat pushes against the second cleat
securing member to detach the cleat from the coupling mechanism}.” Id. at
10.
Appellant contends that Bryne fails to disclose a cleat movement
restricting member that is capable of providing an upward movement to the
cleat during a disengagement operation, as required by claims 1 and 15.
Appeal Br. 17. Appellant contends that, in Bryne, the alleged “cleat
movement restricting member” is incapable of guiding the cleat upward

4 The Examiner explains that the brackets “{}” have the same meaning as
noted above. Final Act. 10.
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during a cleat disengagement operation because the forward crosslink 58,
flange 82, and countersunk hole 84 are all disposed far below the rotating
portion of the cleat during such operation, and thus, likely to make no
contact with the cleat during a disengagement operation. Id. at 17, 18. In
support, Appellant provides an annotated Figure 5 of Bryne. Id. at 18.
The Examiner responds that there is no illustrated structural difference
between Appellant’s cleat movement restricting member 6 and the cleat
movement restricting member of Bryne. Ans. 18. According to the
Examiner, each of these cleat movement restricting members “is a surface
that is inclined relative to the XY-plane.” Id. Therefore, the Examiner
submits, “Bryne is inherently capable of the claimed functions in the same
way that the cleat movement restricting member is inherently capable of the
claimed functions.” Id.
Appellant replies that the Examiner has failed to show that the first
forward crosslink 58, flange 82, and countersunk hole 84 in Bryne are
“made to” perform the claimed guiding function, as required by Aspex
Eyewear. Reply Br. 8. Rather, Appellant contends, Bryne describes that
countersunk hole 84 in flange 82 is made to receive the head of adjustment
screw 80, such that rotation of the adjustment screw effectively moves stop
plate 74 upward or downward relative to forward crosslink 58, to tighten or
loosen the spring tension. Id. (citing Bryne, col. 6, ll. 40–50). Appellant
contends that Bryne does not mention that countersunk hole 84 or flange 82
guides a cleat upward to release the cleat, as claimed.
Appellant’s contentions are persuasive. Even assuming that Bryne’s
“cleat movement restricting member” including forward crosslink 58, flange
82, and countersunk hole 84 can be considered to have a “slanted surface,”
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as claimed, the Examiner does not direct us to any disclosure in Bryne that
supports the position that this slanted surface is configured to guide the cleat
upward such that it detaches from the coupling mechanism of the pedal
during a cleat disengagement operation, as the Examiner finds. Thus, we are
not persuaded that Bryne inherently discloses the claimed cleat movement
restricting member.
We do not sustain the rejection of claims 1 and 15, or claims 2–14
depending from claim 1, as anticipated by Bryne.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15 112, second
paragraph
Indefiniteness 15
1–15 102(b) Peyre 1–15
1–15 102(b) Bryne 1–15
Overall
Outcome
15 1–14

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART