Ex Parte Campagnolo

Board of Patent Appeals and Interferences

Jun 2, 2010

10980693 (B.P.A.I. Jun. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VALENTINO CAMPAGNOLO
____________

Appeal 2009-007428
Application 10/980,693
Technology Center 3600
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Decided: June 29, 2010
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Valentino Campagnolo (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 2-6, 8, 9, 15, 16, 28, and
29, which are all of the pending claims. App. Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
THE INVENTION
Appellant’s claimed invention is a coupling safety pedal and shoe
combination for bicycles. Spec. 1, para. [0005]; Claims App’x. Claim 28.
Claim 28, reproduced below, is representative of the subject matter on
appeal.
28. A quick coupling safety pedal and shoe combination, said
combination comprising:
a shoe comprising a sole with a cleat fastened to it, said
cleat having a front end, a rear end having an upper cam
surface, a laterally-extending base foot and a chamfered lower
surface, and a longitudinal axis extending from said front end to
said rear end; and
a pedal comprising
a) a generally planar shoe surface,
b) a plate of a predetermined thickness fixed to said shoe
surface,
c) a first biased receiving element for removably locking
said front end of said cleat on said pedal,
d) a second biased receiving element for removably
locking said rear end of said cleat on said pedal, said second
biased receiving element including bias means cooperatively
engaged with said upper cam surface of said rear end of said
cleat, and movable between a locking position and a releasing
position,
e) a ramp on a selected side of said plate that resists
movement of said cleat in a laterally outward direction relative
to said shoe surface and rotating said cleat about the
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longitudinal axis of said cleat when said cleat is moved in the
laterally outward direction, said ramp being integrally formed
with and extending from said plate and having a thickness
greater than said predetermined thickness of said plate, and
f) a flat surface defined on said plate and opposite to said
ramp that permits movement of said cleat in a laterally inward
direction and prevents said cleat from rotating about the
longitudinal axis of said cleat when said cleat is moved in the
laterally inward direction,
wherein said upper cam surface of said rear end of said
cleat urges said second biased receiving element from said
locking position to said releasing position when said rear end of
said cleat is moved laterally outward relative to the plane of
said shoe surface.
THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 15, 16, and 28 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Rejection of claims 2-6, 8, 9, 15, 16, 28, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Appellant’s Admitted Prior Art (AAPA)1 and
Heim (US 5,992,266).
ANALYSIS
Rejection of claims 15, 16, and 28 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement
The issue before us is whether Appellant’s originally filed
Specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, Appellant was in possession of the subject
matter of claims 15, 16, and 28.

1 Figure 1 of the present invention.
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Independent claim 28 is directed to a quick coupling safety pedal and
shoe combination that includes a plate fixed to the generally planar shoe
surface of the pedal. The plate includes a ramp disposed on a selected side
of the plate and a flat surface defined on the plate opposite to the ramp.
When the cleat is moved in the laterally outward direction, the ramp resists
that movement, and when the cleat is moved in the laterally inward
direction, the flat surface prevents the cleat from rotating about its
longitudinal axis. Claims 15 and 16 depend from independent claim 28.
The Examiner rejected claims 15, 16, and 28 under 35 U.S.C. § 112,
first paragraph, for failure to meet the written description requirement
because Appellant’s Specification does not support the limitation of claim
28 that the flat surface of the plate “prevents said cleat from rotating about
the longitudinal axis of said cleat when said cleat is moved in the laterally
inward direction.” Ans. 3-4. The Examiner also objected to Appellant’s
September 25, 2006, amendment of paragraph 0028 of Appellant’s
Specification to add the phrase “along the flat surface 42 of the plate 15” as
introducing new matter. Ans. 3. We will evaluate the written description
rejection against the original disclosure, and following this analysis, we
address the objection.
Written Description
Appellant argues claims 15, 16, and 28 as a group. App. Br. 9-11;
Reply Br. 2-5. We select independent claim 28 as the representative claim,
and claims 15 and 16 stand or fall with claim 28. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant argues that in Appellant’s originally filed Specification,
plate 15 included a flat surface and the amendment simply now labels that
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previously disclosed flat surface as flat surface 42. App. Br. 9-11; App’x.
25-30. This argument fails to address the rejection. The rejection is not
contending that plate 15, as disclosed in Appellant’s originally filed
Specification, does not include a flat surface; rather, the rejection finds that
there is no support in Appellant’s original disclosure for the limitation of
claim 28 that the flat surface (now labeled 42) prevents rotation of the cleat
about its longitudinal axis. Ans. 3-4, 8.
Appellant argues that paragraphs [0027] and [0028] and figure 2 of
Appellant’s Specification describe that plate 15 prevents cleat 5 from
rotating about its longitudinal axis. Reply Br. 4-5; App. Br., Claims App’x.
25-30. We disagree.
First, Appellant’s Specification does not explicitly describe that the
flat surface of plate 15 (now labeled flat surface 42) prevents the cleat from
rotating about its longitudinal axis. While this subject matter need not be
described explicitly, In re Smith, 481 F.2d 910, 914 (CCPA 1973), the
Specification nevertheless “must convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, [applicant] was in
possession of the invention” as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Appellant’s originally filed Specification2 describes a first
embodiment that is “essentially identical” with a prior art pedal. Spec. 1-2,
paras. [0007]-[0009], id. at 4, para. [0027]; figs. 1 (prior art), 2 (claimed
device). In operation of both the prior art device and Appellant’s claimed
device, when the heel of the shoe is moved in a laterally outward direction

2 Unless stated otherwise, all references to Appellant’s Specification refer to
the Specification prior to the September 25, 2006, proposed amendment.
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with respect to the bicycle, tab 40 forces the side of cleat 5 which is moved
away from the center of the pedal to raise upwardly (rotating cleat 5 about
its longitudinal axis). Spec. 1-2, para. [0009]; id. at 4-5, para. [0028].
The claimed device differs from the prior art device in that, in the
claimed device, plate 15 has a tab 40 on the external side of the pedal (the
side furthest from the bicycle); however, the tab 40 on the internal side of
the pedal has been eliminated. Spec. 2-3, paras. [0010], [0013]; 4, para.
[0027]; figs. 1, 2. In operation of the claimed device, when the heel of the
shoe is moved in a laterally inward direction with respect to the bicycle,
there is no tab 40 forcing the side of cleat 5 to raise upwardly, and the rear
part of cleat 15 moves along the flat surface 42 of plate 15 without lifting the
internal side of the cleat and thus without rotating cleat 5 about its
longitudinal axis. Spec. 4-5, para. [0028]; figs. 2, 3.
While the internal side of plate 15 does not have a tab 40 that causes
rotation, Appellant’s original disclosure does not describe or show any
feature of plate 15 (now labeled flat surface 42) that prevents the cleat 5
from rotating about its longitudinal axis. Spec. passim. The absence of a
tab 40 on the internal side of the pedal that causes rotation does not mean
that rotation is prevented. For example, Appellant’s Specification does not
describe anything about plate 15 that would prevent the cyclist from moving
cleat 5 in a laterally inward direction and then rotating the cleat 5 about its
longitudinal axis.
We conclude Appellant’s original disclosure does not convey with
reasonable clarity to those skilled in the art that Appellant was in possession
of the device as claimed. Claims 15 and 16 fall with claim 28.
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New Matter Objection
Ordinarily an objection is petitionable to the Director and a rejection
is appealable to the Board. When the same issue of new matter presented is
the subject of both an objection and a rejection, the issue is appealable.
MPEP § 2163.06, II. Review of New Matter Objections And/Or Rejections
(8th ed., Rev. 7, July 2008). See also MPEP § 608.04(c) (8th ed., Rev. 7,
July 2008); 35 U.S.C. § 134(a); and 37 C.F.R. § 1.181(a)(1). The issue in
the rejection of claims 15, 16, and 28 was whether the Specification
conveyed with reasonable clarity how the flat surface prevents rotation of
the cleat along its longitudinal axis. In contrast, the issue in the objection is
whether the originally filed Specification disclosed the reason for which a
lateral inward movement of the rear part of the cleat can occur without
lifting the internal side of the cleat, viz, due to movement “along the flat
surface 42 of the plate 15.” In particular, the Examiner found that the
amendment to paragraph [0028] of the Specification raises a new matter
issue “since the specification as originally filed fails to describe that the rear
part of the cleat moves along the flat surface (where the tab 40 would have
been located) of the plate.” Ans. 6. We do not need to decide this issue in
order to decide the rejection under § 112, and thus, the issue raised by the
Examiner’s objection is not the same as the issue raised by the rejection.
Accordingly, we do not reach the objection.
Rejection of claims 2-6, 8, 9, 15, 16, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s Admitted Prior Art (AAPA) and Heim
The Examiner found that AAPA fails to show a ramp that resists
movement of the cleat in a laterally outward direction, but concluded that it
would have been obvious to add the ramp on the outward side of the pedal,
as taught by Heim. Ans. 4-5.
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Claims 15, 16, and 28
The issue before us is whether the proposed combination would have
led one having ordinary skill in the art to a pedal having a flat surface that
permits movement of the cleat in a laterally inward direction as called for in
claim 28.
Independent claim 28 includes the limitation of a plate having a flat
surface that permits movement of the cleat in a laterally inward direction.
AAPA discloses a safety pedal for a bicycle that includes a sheet-
metal plate 15 having tabs 40 towards the rear of the pedal on both sides
(inward and outward) of the cleat (plate 5). Spec. 2, para. [0009]; fig. 1.
AAPA does not disclose a sheet-metal plate 15 having no tab on the inward
side. Further, the rejection does not propose a modification based on a
teaching of Heim to remove the tab 40 of sheet-metal plate 15 on the inward
side of the pedal of AAPA. Given this, Appellant correctly points out
(Reply Br. 5-6) that the proposed combination does not disclose or suggest a
flat surface that permits movement of the cleat in a laterally inward direction
as called for in claim 28. The rejection of claims 15 and 16 under 35 U.S.C.
§ 103(a) is also in error by virtue of their dependence from independent
claim 28.
Claims 2-6, 8, 9, and 29
The issue before us is whether the proposed combination would have
led one having ordinary skill in the art to a pedal having a stop means
positioned on a plate for limiting movement of the rear of the cleat in a
laterally inward direction relative to the bicycle.
Independent claim 29 is similar to claim 28 except that instead of
claiming a flat surface defined on the plate, claim 29 contains the limitation
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that the plate includes a stop means positioned for limiting movement of the
rear of the cleat in a laterally inward direction relative to the bicycle.
AAPA discloses a safety pedal for a bicycle that includes a sheet-
metal plate 15 having tabs 40 towards the rear of the pedal on both sides
(inward and outward) of the cleat (plate 5). Spec. 2, para. [0009]; fig. 1; see
also U.S. Patent 5,419,218, col. 1, ll. 5-6; col. 4, ll. 49-55; fig. 1. 3 Tab 40
resists (due to the incline), but does not limit, the movement of the cleat
(plate 5) in a laterally inward direction relative to the bicycle. Spec. 2, para.
[0009]; see also U.S. Patent 5,419,218, col. 4, ll. 51-55; figs. 1, 6. Further,
the rejection does not propose a modification based on a teaching of Heim to
remove the tab 40 of sheet-metal plate 15 on the inward side of the pedal of
AAPA and replace this tab 40 with a stop means. Ans. 4-5.
Given this, Appellant correctly points out (Reply Br. 9-10) that the
proposed combination does not disclose or suggest a stop means positioned
on a plate for limiting movement of the rear of the cleat in an inward
direction relative to the bicycle as called for in independent claim 29. The
rejection of claims 2-6, 8, 9 is also in error by virtue of their dependence
from independent claim 29.
DECISION
We AFFIRM the Examiner’s decision to reject claims 15, 16, and 28
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

3 Appellant’s Specification (para. [0007]) indicates that Figure 1 of
Appellant’s application is identical to Figure 1of U.S. Patent 5,419,218, and
incorporates a description of Figure 1 from the ‘218 patent by reference.
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We REVERSE the Examiner’s decision to reject claims 2-6, 8, 9, 15,
16, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Appellant’s
Admitted Prior Art (AAPA) and Heim.

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) (2009).

AFFIRMED-IN-PART

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