Ex Parte CaiazzoDownload PDFPatent Trial and Appeal BoardMar 17, 201712020279 (P.T.A.B. Mar. 17, 2017) Copy Citation 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. 12/020,279 01/25/2008 Marco Caiazzo CAM3-PT137 1592 3624 7590 03/21/2017 VOLPE AND KOENIG, P.C. UNITED PLAZA 30 SOUTH 17TH STREET, 18th Floor PHILADELPHIA, PA 19103 EXAMINER NGUYEN, XU AN LAN T ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 03/21/2017 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): eoffice @ volpe-koenig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCO CAIAZZO Appeal 2014-009713 Application 12/020,279 Technology Center 3600 Before JILL D. HILL, JAMES J. MAYBERRY, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marco Caiazzo (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s May 24, 2013 final decision rejecting claims 1—3, 5, 8, 9, 11, 12, and 34—39.2 An oral hearing in accordance with 37 C.F.R. § 41.47 was held on February 23, 2015. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Campagnolo S.r.l. App. Br. 4. 2 Claims 4, 6, 7, 10, 13—33, and 40 are canceled. Id. at 6. Appeal 2014-009713 Application 12/020,279 SUMMARY OF INVENTION Appellant’s claimed invention “relates to a bicycle brake.” Spec. 1 5. Claim 1, reproduced below from page 29 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. Bicycle brake comprising: (i) a first lever having a pivoting area, an actuation arm extending from the pivoting area to an area configured for connecting to an inner cable of a brake cable, and a braking arm extending from the pivoting area to an area configured for supporting a brake pad; and (ii) a second lever having an actuation arm for connecting to a sheath of the brake cable and a braking arm for supporting a brake pad; wherein the actuation arm of the first lever between the pivoting area and the area configured for connecting to the inner cable of the brake cable is comprised essentially of distal and proximal branches that extend from the pivoting area to the area configured for connecting to the inner cable of the brake cable. REJECTIONS Claims 1—3, 5, 8, 9, and 34—39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over JP ’686 (JP 61-147686, pub. Sept. 11, 1986) and Yoshigai (US 5,082,092, iss. Jan. 21, 1992). Claims 1,11, and 12 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Mercat (EP 0965518, pub. Dec. 22, 1999) and Yoshigai. 2 Appeal 2014-009713 Application 12/020,279 ANALYSIS Rejection Based on JP ’686 and Yoshigai Claims 1, 5, 9, and 34—36 Appellant argues claims 1, 5, 9, and 34—36 together. App. Br. 14—27. We select claim 1 as representative, treating claims 5, 9, and 34—36 as standing or falling with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that JP ’686 discloses a pivot-type bicycle brake substantially as defined in independent claim 1, including a first lever 1 having an actuation arm, but does not disclose the first lever actuation arm being comprised essentially of distal and proximal branches. Final Act. 2, 7. The Examiner finds that Yoshigai discloses a cantilever-type bicycle brake that evidences the “common practice in the art of bicycle brake[s] to have an actuation arm 4' with one branch as shown in figure 3 or to have an actuation arm 4 with two branches as shown in figure 1 as alternative designs.” Id. at 2. The Examiner reasons that it would have been obvious to an artisan of ordinary skill to modify the first lever actuation arm of JP ’686 to “comprise two branches as taught by Yoshigai as an alternative design to a one branch actuation arm.” Id. at 3. The Examiner further reasons that “[t]he advantage of having two branched arm[s] would be weight reduction without sacrificing strength.” Id. at 8. The Examiner notes that “[t]his reason is the same as Appellant’s reason, as stated in Appellant’s [Specification.” Ans. 6 (citing Spec. 129). Appellant traverses, arguing first “[njeither [JP ’686] nor Yoshigai teaches or suggests improving the stress distribution in a single-pivot or 3 Appeal 2014-009713 Application 12/020,279 dual-pivot bicycle brake through a branched actuation arm of the first lever.” App. Br. 21 (emphasis omitted). Continuing, Appellant alleges error because “[w]hat the examiner regards as an actuation arm in Yoshigai, i.e. the two-branched portion (4) from the brake pad (6) to the cable connection (7), is not an actuation arm because it does not end at a pivot.” App. Br. 21— 22. We are not persuaded by Appellant’s arguments. Rather than relying on one of the cited references as teaching a branched first lever actuation arm in a single-pivot or dual-pivot bicycle brake, the Examiner relied on the combination of JP ’686 and Yoshigai to teach this feature. Final Act. 2—3. Appellant’s arguments are not directed to the rejection as set forth by the Examiner, and, thus, fail to apprise us of error. Furthermore, during the oral hearing, Appellant conceded that the Examiner’s modification of JP ’686 to include a branched first lever actuation arm would result in one branch being in compression and the other branch being in tension during use. Tr. 2:22—3:3. Therefore, we understand that this argument has been waived. Appellant also argues that “[t]he [Ejxaminer draws a generic teaching from Yoshigai that is not in the reference. Although Yoshigai shows, in [F]ig. 1, a portion of the brake lever comprises two branches, it is totally silent on the purpose of this feature or any significance attributable to it.” App. Br. 22. Thus, according to Appellant, the Examiner’s rationale for modifying the brake of JP ’686 is “made with the hindsight of the present invention.” Id.', see also Reply Br. 11. 4 Appeal 2014-009713 Application 12/020,279 During the oral hearing, Appellant conceded that the Examiner’s modification of JP ’686 to include a branched first lever actuation arm would result in one branch being in compression and the other branch being in tension during use. Tr. 2:22—3:3. Appellant further conceded that the Examiner’s rationale of such modification—weight reduction (Final Act. 8)—was accurate and that Appellant “do[es]n’t take exception to the [EJxaminer’s position that the prior art, which has two branches, would also have less metal and therefore would have some weight reduction.” Id. at 4:23—25. Therefore, we understand that this argument has been waived. Appellant also argues that “one of ordinary skill in the art would not look to the centrally pulled cantilever brake lever of Yoshigai to modify the side-pull caliper brake lever of [JP ’686]” because of “the significant[] differences in stress concentrations and forces experienced by these two distinct classes of levers.” App. Br. 22 (emphasis omitted). Continuing, Appellant asserts that “the Examiner’s proposed combination clearly requires a change in the operating principle of either [JP ’686] or Yoshigai.” Id. We are not persuaded by these arguments. The Examiner proposes to modify the first lever actuation arm of JP ’686 to have the branched configuration illustrated in Yoshigai Figure 1. Final Act. 2—3. The brake of JP ’686 would operate in the same manner, so there is no change in its operating principle. Furthermore, even assuming arguendo that the stress concentrations experienced by the brake levers of Yoshigai and JP ’686 are significantly different, Appellant has not persuasively explained why such a difference 5 Appeal 2014-009713 Application 12/020,279 would prevent an artisan of ordinary skill from applying teachings regarding Yoshigai’s lever to the lever of JP ’686. Moreover, as noted above, Appellant conceded during the oral hearing that, as set forth by the Examiner, modifying JP ’686 to have a lever with two branches, such as that illustrated in Yoshigai, would result in weight reduction. Tr. 2:22—3:3, 4:23—25. Appellant has failed to apprise us of error. Finally, Appellant argues that “the combination [of JP ’686 and Yoshigai does] not render claim[] 1 . . . obvious since the ‘branched’ portion of Yoshigai’s brake arm 4 only extends between the actuation end 7 and the brake shoe 6,” and claim 1 “recite[s] a branched actuation arm of the first lever that extends from the pivoting area to the area configured for connecting to an inner cable of a brake cable.” App. Br. 26 (emphasis omitted). Continuing, Appellant argues that “the forces exerted on Yoshigai's ‘branched’ portion by the centrally pulled, straddle cable are necessarily different from the forces exerted on Appellant’s distal and proximal branches,” because “[i]n Appellant[’s] brake the compressive stress is in the upper arm and the tensile stress is in the lower arm; in Yoshigai there is a bending stress of the levers.” Id. We are not persuaded by these arguments. The Examiner does not suggest replacement of the first lever arm of JP ’686 with Yoshigai’s lever arm; rather, the Examiner proposes to modify the first lever actuation arm of JP ’686 to have the branched configuration illustrated in Yoshigai Figure 1. Final Act. 2—3. Appellant’s arguments are not directed to the rejection as set forth by the Examiner, and, thus, fail to apprise us of error. 6 Appeal 2014-009713 Application 12/020,279 Furthermore, during the oral hearing, Appellant conceded that the Examiner’s modification of JP ’686 to include a branched first lever actuation arm would result in one branch being in compression and the other branch being in tension during use. Tr. 2:22—3:3. Therefore, we understand that this argument has been waived. Accordingly, we sustain the rejection of claim 1, as well as of claims 5, 9, and 34—36 that fall with claim 1, as being unpatentable over JP ’686 and Yoshigai. Claims 2, 3, 8, 37, and 38 Claim 37 depends directly from claim 1 and further requires “wherein the second lever comprises a reinforcing beam extending between the actuation arm and the braking arm.” App. Br. 32 (Claims Appendix). Claims 38 depends directly from claim 37, and claim 8 depends directly from claim 38; both of these claims further define the reinforcing beam. Id. at 30, 32 (Claims Appendix). The Examiner finds that JP ’686 discloses a second lever with a reinforcing beam as recited in claims 37, 38, and 8. Final Act. 3. Appellant acknowledges that “[t]he second lever 2 of [JP ’686] has ... a reinforcing beam that extends from a point at the middle of the actuation arm to a point intermediate the braking arm,” but argues that “[JP ’686] does not have a branched arm.” App. Br. 27 (emphasis omitted). We are not persuaded by this argument. There is no requirement in any of claims 37, 38, or 8 that the second lever have a branched arm. App. Br. 30, 32 (Claims Appendix). Nor do claims 2 or 3 require the second lever to have a branched arm. Id. at 29 (Claims Appendix). Appellant’s argument 7 Appeal 2014-009713 Application 12/020,279 is not directed to any claim limitation, and thus does not persuade us of error. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). To the extent Appellant’s argument is directed to the first lever, it is unpersuasive for the reasons set forth above. Accordingly, we sustain the rejection of claims 2, 3, 8, 37, and 38, as being unpatentable over JP ’686 and Yoshigai. Rejection Based on Mercat and Yoshigai The Examiner finds that Mercat discloses a bicycle brake substantially as defined in independent claim 1, including a first lever 14 having an actuation arm, but does not disclose the first lever actuation arm being comprised essentially of distal and proximal branches. Final Act. 5. The Examiner relies on Yoshigai to teach the use of a branched actuation arm, relying on similar reasoning as with claim 1. Id. at 5—6. Appellant traverses, presenting arguments similar to those presented with respect to claim 1. App. Br. 23—27. These arguments are unpersuasive for the reasons set forth above. Accordingly, we sustain the rejection of claims 1,11, and 12 over Mercat and Yoshigai. Additional Arguments Presented During Oral Hearing Appellant presented additional arguments during the oral hearings. For example, Appellant argued that Mercat does not disclose how the brake levers are connected to the sheath and wire of the brake cable. Tr. 3:8—25. Such arguments, however, were not included in the Appeal Brief or the 8 Appeal 2014-009713 Application 12/020,279 Reply Brief, and, therefore, are not properly before us on appeal. See 37 C.F.R. §41.47(e)(1). DECISION The Examiner’s decision to reject claims 1—3, 5, 8, 9, 11, 12, and 34— 39 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation