Ex Parte Callahan et al

Patent Trial and Appeal Board

Apr 8, 2014

12361299 (P.T.A.B. Apr. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEAN-LUC CALLAHAN and
CHRISTOPHER PAUL D’ALUISIO
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Appeal 2012-002812
Application 12/361,299
Technology Center 3600
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Before: MICHAEL L. HOELTER, PATRICK R. SCANLON, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002812
Application 12/361,299

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-16. App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a fork assembly for a bicycle.
More particularly, the invention relates to a fork and a lower bearing
assembly configured for use in the fork assembly.” Spec. para. [0002].
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A fork assembly for a bicycle frame having a head tube,
the fork assembly comprising:
a fork including
a fork crown,
a steerer tube defining a central axis, and
a transition coupling the fork crown to the steerer
tube and adapted to be positioned within the head tube,
the transition defining a transition point between the
transition and the steerer tube, and the transition having
an outer dimension that increases from the steerer tube
toward the fork crown; and
a bearing located adjacent the transition point such that a
plane perpendicular to the central axis and passing through the
transition point intersects the bearing, the bearing configured to
rotatably support the fork within the head tube.

REFERENCES RELIED ON BY THE EXAMINER
Lin US 6,254,115 B1 Jul. 3, 2001
Gueugneaud US 6,805,372 B2 Oct. 19, 2004
Schuman US 7,464,950 B2 Dec. 16, 2008

Appeal 2012-002812
Application 12/361,299

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THE REJECTIONS ON APPEAL
Claims 1-3, 5, 6, 8-11, 13, 14, and 16 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lin. Ans. 4.
Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin and Gueugneaud. Ans. 7.
Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin and Schuman. Ans. 7.

ANALYSIS
The rejection of claims 1-3, 5, 6, 8-11, 13, 14, and 16
as being anticipated by Lin
Appellants argue claims 1-3, 5, 6, and 8 together. App. Br. 8-11. We
select independent claim 1 for review with claims 2, 3, 5, 6, and 8 standing
or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants
also argue claims 9-11, 13, 14, and 16 together, however, Appellants
contend that “[t]he arguments presented with regard to claim 1 apply with
equal weight to independent claim 9” and that “[f]or the sake of brevity,
these arguments are not repeated.” App. Br. 11. Appellants also contend
that because claims 10, 11, 13, 14, and 16 depend from claim 9, they are
allowable. App. Br. 11. Hence, claims 2, 3, 5, 6, 8-11, 13, 14, and 16 stand
or fall with claim 1.
Claim 1 includes the limitation of a “transition” with “the transition
defining a transition point between the transition and the steerer tube” (italics
added). Claim 1 also includes the limitation of a bearing located adjacent
the transition point such that a perpendicular plane passing through the
transition point also “intersects the bearing.”
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Application 12/361,299

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Regarding the former “between” limitation, the Examiner finds that
Lin discloses transition 12 and that this transition defines the transition point
between itself and steerer tube 11. Ans. 4-5. More specifically, the
Examiner finds that claim 1 “does not specifically claim that the transition
point is where the transition actually meets the steerer tube” and as such,
“the transition point can be arbitrarily picked.” Ans. 8. Regarding the latter
“intersects the bearing” limitation, the Examiner finds that this limitation is
disclosed in Lin in view of the transition point selected by the Examiner as
illustrated in the Examiner’s annotation of Lin’s figure 4. Ans. 5.
Appellants contend that the Examiner’s location of the claimed
“transition point” is incorrect and that, instead, “the top of [Lin’s] annular
bearing portion [i.e., Lin’s corresponding “transition” 12] is the transition
point” and not some other location. App. Br. 9; see also Reply Br. 4-6. As a
consequence, identifying the transition point as the “top” of Lin’s transition
12, the perpendicular plane passing through the transition point would not
intersect Lin’s bearing and hence would not disclose each and every
limitation of clam 1. App. Br. 8-10; see also Reply Br. 4-6. Appellants also
contend that “the plane defined by the Examiner passes through a point on
the transition, not between the transition and the steerer tube” as claimed.
App. Br. 10.
Appellants’ focus on the “top” of Lin’s transition as the only location
for the transition point is misplaced. First, Appellants’ Specification
identifies this transition point as an “upper transition point” and Appellants
do not explain how the word “upper” means only a top location. Spec. para.
[0016]. Second, claim 1 does not express any such location for the transition
point (i.e., “upper” or “top”) other than only reciting that the transition point
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Application 12/361,299

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is “between” two items. Appellants do not explain how the Examiner’s
illustrated transition point fails to disclose this limitation.
In addition to the above, the doctrine of claim differentiation supports
the Examiner’s rationale that claim 1 encompasses multiple transition points.
Ans. 8. This is because claim 2, which depends from claim 1, identifies a
specific location for the transition point1 which leads to the presumption that
parent claim 1 encompasses not only this location for the transition point but
other locations as well. Our reviewing court has provided instruction that
“[u]nder the doctrine of claim differentiation, dependent claims are
presumed to be of narrower scope than the independent claims from which
they depend.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1242 (Fed.
Cir. 2003). However, this doctrine is not a hard and fast rule, but instead is
“a rule of thumb that does not trump the clear import of the specification.”
Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1332 (Fed. Cir.
2009).
Appellants’ Specification informs that “[b]efore any embodiments of
the invention are explained in detail, it is to be understood that the invention
is not limited in its application to the details of construction and the
arrangement of components set forth in the following description or
illustrated in the following drawings.” Spec. para. [0011]. This same
paragraph continues stating that “[t]he invention is capable of other
embodiments and of being practiced or of being carried out in various
ways.” Spec. [0011]. Hence, while the single embodiment disclosed in

1 Claim 2 includes the additional limitation of “wherein an outer dimension
of the steerer tube at the transition point and an outside dimension of the
transition at the transition point are substantially equal.”
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Appellants’ Specification illustrates the transition point atop2 the transition,
we are informed that alternate arrangements are equally suitable. We are
also instructed by our reviewing court that “even where a patent describes
only a single embodiment, claims will not be ‘read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
“words or expressions of manifest exclusion or restriction.”’” Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.
Cir. 2004) (citations omitted).
Here, Appellants do not show where the written description employs
“words or expressions of manifest exclusion or restriction” in order to read
“top” into the location of the transition point. App. Br. 9-10; Reply Br. 5, 6.
As such, Appellants do not persuasively explain why the transition point as
applied to Lin must be at the top of transition 12 and not elsewhere along the
transition as found by the Examiner. Ans. 5, 8. Appellants’ contentions are
not persuasive. We sustain the Examiner’s rejection of claims 1-3, 5, 6, 8-
11, 13, 14, and 16.
The rejection of (a) claims 4 and 12 as being unpatentable over Lin
and Gueugneaud and (b) claims 7 and 15 as being unpatentable over Lin
and Schuman
Appellants do not present separate arguments for the rejections of
claims 4, 7, 12, and 15 but instead contend that because their respective
parent claim is allowable over Lin, each particular claim is equally allowable
over the cited combination. App. Br. 12. Appellants’ arguments are not
persuasive. We sustain the Examiner’s rejection of claims 4, 7, 12, and 15.

2 Appellants do not employ the word “top” in the Specification.
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DECISION
The Examiner’s rejections of claims 1-16 are 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)(1)(iv).

AFFIRMED

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