Ex Parte BraedtDownload PDFPatent Trial and Appeal BoardSep 20, 201813371229 (P.T.A.B. Sep. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/371,229 02/10/2012 23470 7590 09/24/2018 SRAM,LLC 1000 W. Fulton Market, 4th Floor CHICAGO, IL 60607 FIRST NAMED INVENTOR Henrik Braedt 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. 20153US 9481 EXAMINER TRUONG, MINH D ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 09/24/2018 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): lserdynski@sram.com bgause@sram.com bhinnen@sram.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRIK BRAEDT Appeal2018-001379 1 Application 13/371,2292 Technology Center 3600 Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL Henrik Braedt (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-5 and 7-15, which are all the pending claims in the application. 3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our Decision references Appellants' Appeal Brief ("Br.," filed June 20, 2017), the Examiner's Answer ("Ans.," mailed Aug. 22, 2017), and the Final Office Action ("Final Action," mailed Jan. 20, 2017). 2 Appellant identifies the real party in interest as "SRAM Deutschland GMBH." Br. 2. 3 Claims 6 and 16 are canceled. Id. at 17, 20 (Claims App.). Appeal2018-001379 Application 13/371,229 CLAIMED INVENTION Appellant's "invention relates to bicycles including a multi-gear cassette or multi-sprocket cassette with different sized sprockets for engaging a chain, such as a roller chain." Spec. ,r 1. "In particular, the invention relates to devices [] for the damping of noise created by the interaction of a roller chain and a sprocket of a multi-gear cassette in a drive assembly of a bicycle." Id. Claim 1 reproduced below is the sole independent claim, and representative of the subject matter on appeal. 1. A multi-gear cassette for use with a roller chain of a bicycle, the multi-gear cassette comprising; a plurality of sprockets of varying diameters arranged coaxially about a cassette axis; and a damping element disposed between at least one adjacent pair of the plurality of sprockets that have different diameters, the damping element positioned to contact a chain link plate of the roller chain when the roller chain is engaged with one of the plurality of sprockets and the damping element is configured to not contact the chain link plate of the roller chain when the roller chain is running out of engagement with the one of the plurality of sprockets. Br. 16, Claims App. REJECTIONS 1. Claims 1--4, 7-12, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Kamada (US 2011/0053721 Al, pub. Mar. 3, 2011) and Downey (US 975,938, iss. Nov. 15, 1910). 2. Claims 5 and 13 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Kamada, Downey, and Braedt (US 2010/0075791 Al, pub. Mar. 25, 2010). 2 Appeal2018-001379 Application 13/371,229 ANALYSIS In rejecting independent claim 1 as obvious over Kamada and Downey, the Examiner finds that Kamada discloses "a plurality of sprockets (14) of varying diameters arranged coaxially about a cassette axis (fig. 3)" (Final Act. 2), and acknowledges that Kamada fails to disclose: a damping element disposed between at least one adjacent pair of the plurality of sprockets that have different diameters, the damping element positioned to contact a chain link plate of the roller chain when the roller chain is engaged with one of the plurality of sprockets and the damping element is configured to not contact the chain link plate of the roller chain when the roller chain is running out of engagement with the one of the plurality of sprockets. Id. at 4. Instead, the Examiner relies on Downey to teach cushioning rings 9 that are supported by flanges disposed against each side of the face of the gear. Id. at 5; see Downey 1 :44--55, 84--86. The Examiner determines that "[i]t would have been obvious to one having ordinary skill in the art ... to employ a damping, as taught by Downey, to engage with the drive chain to reduce noise and vibration induced from the drive transmission between the chain and sprocket." Final Act. 7. Alleging error in the rejection, Appellant argues that the Examiner's proposed modification is suggested nowhere in the references and "born from the use of impermissible hindsight reconstruction in view of Applicant's Specification." Br. 10. Appellant contends: "Downey discloses a single sprocket gear" that "necessarily includes a flange on both sides of the singular gear to support the cushion rings 9" and "does not disclose a damping element disposed between any sprockets, let alone at least one 3 Appeal2018-001379 Application 13/371,229 adjacent pair of a plurality of sprockets that have different diameters." Id. at 7. Additionally, Appellant contends: [C]ombining Kamada with Downey would yield a plurality of sprockets having cumbersome support flanges on either both sides of a single sprocket, or both sides of each sprocket, of the plurality of Kamada sprockets. Downey specifically teaches that the cushion "is supported in the manner here shown" in Figures 2 and 3. (Downey, page 1, lines 75-77). No discussion is presented for the need, use, or accounting of these supports or cushions of Downey, as applied to the sprockets of Kamada. One experienced in the art would recognize clearly identifiable problems that would exist if the support structure of Downey were combined with Kamada, for example shifting between sprockets would be impeded. Id. at 9-10. According to Appellant, the Examiner's rationale for the combination "that it would have been obvious to one of ordinary skill in the art ... to employ the cushion rings of Downey to the sprockets in Kamada to reduce noise in the sprockets" (id. at 10) improperly relies on hindsight, because "there is no evidence in the record that there was a known vibration or noise problem with the Kamada sprockets that would cause a person in the art to tum to the teachings of Downey." Id. at 12 ("the noise or vibration problem with Kamada appears to have been conjured by the Examiner in order to modify the presented references to render obvious the patentable features of the Applicant's multi-gear cassette configuration."). In response to Appellant's arguments, the Examiner repeatedly quotes from and cites to In re McLaughlin 4 (see Ans. 3, 5, 6-7), and repeatedly asserts: It is well known to one having ordinary skill in the art that an impact between two hard structures, such as a chain and a 4 443 F.2d 1392 (CCPA 1971). 4 Appeal2018-001379 Application 13/371,229 sprocket, would produce noise and vibration. The noise and vibration are not desirable to a user. As such, employing a damping element between the interface of the chain and sprocket would help reduce these undesirable characteristics and ensure a more pleasant operation. Downey page 1 lines 11-12 and 91-92 further supports that the damping element is desirable to prevent noise and vibration. Id. at 4; see also id. at 5, 7. Appellant's arguments are persuasive. As discussed above, claim 1 recites "a damping element disposed between at least one adjacent pair of the plurality of sprockets that have different diameters." Br., Claims App. The claim requires the positioning of a dampening element between a pair of sprockets. Further, the claim requires a structural configuration such that Id. the damping element [is] positioned to contact a chain link plate of the roller chain when the roller chain is engaged with one of the plurality of sprockets and the damping element is configured to not contact the chain link plate of the roller chain when the roller chain is running out of engagement with the one of the plurality of sprockets. The Examiner's obviousness determination merely offers a conclusion, without adequate evidence or technical reasoning as to the placement of Downey's dampening element with Kamada's sprocket to achieve the proposed modification. The Examiner appears to rely heavily on common knowledge "that an impact between two hard structures, such as a chain and a sprocket, would produce noise and vibration" (see supra) to modify Kamada' s sprocket with the cushioning rings of Downey to achieve the structural configuration claimed, and to serve as motivation to combine the prior art references. In this case, the Examiner's reliance on "common knowledge" appears to be ad hoc in nature. Although the interaction 5 Appeal2018-001379 Application 13/371,229 between a chain and sprocket might produce some noise, there is no indication in Kamada that, if such noise is produced, it would be of a type that is loud enough to warrant a dampening device. Moreover, even if a dampening device were to be included into Kamada' s sprocket, we fail to understand, and the Examiner has not adequately explained, why the combined teachings of Kamada and Downey would result in the claimed subject matter. Accordingly, we do not sustain the rejection of independent claim 1 as obvious over Kamada and Downey. The Examiner's additional findings and determinations with respect to the dependent claims and the additional prior art reference (Braedt) do not remedy the above-discussed deficiency in the rejection of independent claim 1. DECISION The Examiner's decision to reject claims 1-5 and 7-15 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation