Ex Parte CLEMENT

Patent Trial and Appeal Board

Aug 21, 2018

14051422 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/051,422 10/10/2013
23581 7590 08/23/2018
KOLISCH HARTWELL, P.C.
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
FIRST NAMED INVENTOR
Adam John CLEMENT
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.
CET.301CIP 4155
EXAMINER
JOHNSON, VICKY A
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
docketing@khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM JOHN CLEMENT
Appeal2017-010433 1
Application 14/051,422
Technology Center 3600
Before WILLIAM A. CAPP, NATHAN A. ENGELS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Application identifies Gevenalle LLC as the Applicant. Appellant
identifies Gevenalle LLC as the real party in interest. Appeal Br. iv.
Appeal2017-010433
Application 14/051,422
THE INVENTION
Appellant's invention relates to bicycle brake and gear shift
controllers. Spec. 2. Claim 1, reproduced below with paragraph
indentations added, is illustrative of the subject matter on appeal.
1. A control device for mounting on a bicycle handlebar,
the control device comprising:
a rotatable brake lever adapted to be attached to a drop-style
handlebar of a bicycle and defining a first axis of rotation,
wherein rotation of the brake lever about the first axis of
rotation is configured to move an elongate control portion of
the brake lever generally toward and away from the handlebar
within a brake lever plane;
wherein the control portion of the brake lever defines a
proximal side generally closer to the handlebar and a distal side
generally further from the handlebar; and
a rotatable shift lever adapted to be operatively connected to
the brake lever and disposed on the distal side of the control
portion of the brake lever, the shift lever defining a second axis
of rotation substantially perpendicular to the first axis of
rotation, and
wherein the shift lever may be rotated by hand through a
plurality of operating positions without movement of the brake
lever;
wherein each operating position of the shift lever
corresponds to a gear of the bicycle, and
wherein the shift lever is configured to be rotated in a first
direction to cause a shift into a smaller gear, and to be rotated in
a second direction to cause a shift into a larger gear; and
wherein the shift lever is configured to be mechanically
held in a selected one of the operating positions after being
rotated. comprising.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Nagano
Fujii
us 5,241,878
US 7,565,848 B2
Sept. 7, 1993
July 28, 2009
The following rejections are before us for review:
1. Claims 1-13 are rejected under 35 U.S.C. 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
2. Claims 1-5 and 7-12 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Fujii.
3. Claims 1-20 are rejected under 35 U.S.C. § 103, as being
unpatentable over Nagano.
OPINION
Section 112 Indefiniteness
Claim 1
The Examiner considers claim 1 to be indefinite because it is
purportedly directed to a mixture of apparatus and method limitations. Final
Action 3 (citing MPEP § 2173.05(p)(ii)). The preamble of claim 1 indicates
that it is an apparatus claim. Claims App. The Examiner considers the
following limitation of claim 1 as directed to a method of using the device.
the shift lever is configured to be rotated in a first direction to
cause a shift into a smaller gear, and to be rotated in a second
direction to cause a shift into a larger gear; and wherein the
shift lever is configured to be mechanically held in a selected
one of the operating positions after being rotated,
Final Action 3, Claims App. claim 1.
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In response, Appellant argues that the limitation at issue is a
functional limitation of an apparatus claim. Appeal Br. 3. Appellant cites In
re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) for the proposition that an
apparatus may be claimed either structurally or functionally. Appellant
emphasizes that "reciting how a claimed apparatus functions is not the same
as reciting a user carrying out those functions." Appeal Br. 4.
In response, the Examiner takes the position that the claim requires
method step actions to be taken by a user. Ans. 3. "Mechanically held' is
not what makes the claim indefinite it is 'after being rotated.' The rotation is
done by the user, when the device is being used." Id.
In the case of IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377 (Fed. Cir. 2005), the Federal Circuit held that a claim reciting
both a system and the method for using the system is indefinite, as it does
not apprise a person of ordinary skill in the art of its scope. Id. at 1384. In
IPXL, the Federal Circuit maintained that it is unclear whether infringement
of the claim occurs when one creates the system or whether infringement
occurs when the user actually uses the system. Id. However, that is not the
case here.
Appellant is correct in observing that a patent applicant is free to
recite features of an apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210,212 (CCPA 1971) (there is nothing intrinsically
wrong with defining something by what it does rather than what it is). We
agree with Appellant that the claim language at issue is a properly recited
functional limitation of an apparatus claim. In other words, it recites what
the structure is capable of doing. It does not, however, require an act to
actually be performed by a user in order to practice the invention.
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Consequently, we do not sustain the Examiner's Section 112
indefiniteness rejection of claim 1.
Claims 2 and 5
The Examiner also considers claims 2 and 5 to recite methods of using
a device in an apparatus claim. Final Action 3--4. We disagree with the
Examiner's conclusion that claims 2 and 5 recite method steps for
substantially the same reasons discussed above with respect to the
indefiniteness rejection of claim 1. Accordingly, we do not sustain the
Examiner's Section 112 indefiniteness rejections of claims 2 and 5.
Claims 3, 4, and 6
These claims are rejected solely on account of their dependence from
claim 1. Accordingly, we do not sustain the Examiner's Section 112
indefiniteness rejection of claim 3, 4, and 6.
Claim 7
The Examiner considers claim 7 indefinite because it is allegedly
unclear which elements are required for the "means of operating." Final
Action 4. In traversing the rejection, Appellant identifies the language in the
Specification as disclosing corresponding structure for the claimed means.
Appeal Br. 6 (citing Spec. 14:18-15:8). In response, the Examiner states
that the Specification passage identified by Appellant in the Appeal Brief
fails to explicitly recite that it is the claimed "means for operating." Ans. 3.
The governing statute provides, in pertinent part, that:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
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35 U.S.C. § 112(±). The statute merely requires that the Specification
disclose structure that corresponds to the claimed means. Id. Here,
Appellant properly identifies the corresponding structure to the claimed
means. Appeal Br. 6. The Examiner errs in requiring that Appellant
explicitly denote somewhere in the Specification that certain specified
structure is the structure corresponding to the claimed means. We know of
no such requirement, and the Examiner cites no competent legal authority to
support such a position.
Therefore, we do not sustain the Examiner's Section 112
indefiniteness rejection of claim 7.
Claims 8-13
These claims are rejected solely on account of their dependence from
claim 7. Accordingly, we do not sustain the Examiner's Section 112
indefiniteness rejection of claim 8-13.
Anticipation of Claims 1-5 and 7-12 by Fujii
Claims 1-5
The Examiner finds that Fujii discloses all of the elements of claim 1.
Final Action 4--5. In particular, the Examiner finds that Fujii discloses a
"shift lever" disposed on the distal side of the control portion of the brake
lever as claimed. Id.
Appellant argues that Fujii fails to disclose a shift lever as claimed.
Appellant argues that Fujii, instead, discloses an electrical shift control
switch, which is not a "lever." Appeal Br. 10. Appellant supports this
position with references to the Specification and to on-line dictionary
definitions of "lever." Id.
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The Examiner responds by identifying Fujii element 62 as
corresponding to the rotatable shift lever of claim 1. Ans. 4. The Examiner
takes the position that the meaning of "lever" does not require an elongated
portion to provide a mechanical advantage. Id. at 5.
The Examiner and Appellant differ over the meaning of the term
"lever." During examination of a patent application, pending claims are
given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). However, even under the broadest reasonable interpretation, the
Board's construction "cannot be divorced from the specification and the
record evidence." In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A
construction that is "'unreasonably broad" and does not "reasonably reflect
the plain language and disclosure" will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
Reading the claim language in light of Appellant's Specification, we
think that a person of ordinary skill in the art would understand that a
"lever" is a device that is capable of producing "leverage." This is
ordinarily accomplished using a beam or rigid rod that pivots at a hinge or
fulcrum. As correctly argued by Appellant, such a mechanism provides a
mechanical advantage or "leverage." Appeal Br. 10.
Fujii discloses a bicycle control device that includes a base member,
an electrical shift control switch and a brake lever. Fujii, Abstract. Fujii
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explicitly describes the brake control as a "lever" that is pivotally attached to
the base member. Id. However, when it comes to the shift control, Fujii
uses the term "electrical shift control switch," but never the word "lever."
Id. Using the term "lever" for the brake control, but not the gear shift
control, is persuasive evidence that Fujii did not consider its gear control to
comprise a "lever." The structure of Fujii's electrical shift control switch is
depicted in Figures 6-11 and operation of the shift control switch is
described in column 5, line 54 through column 6, line 62. Id. at 2:45---67,
5:54---6:62. Based on the drawings and accompanying description, a person
of ordinary skill in the art would understand the structure and operation of
Fujii's electrical shift control switch as a rotating knob or "twist grip," not a
"lever." Fuji, 2:40-44.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). The
Examiner's anticipation rejection relies on an overly broad construction of
lever that is not grounded in the Specification. Using a proper construction
of lever, Fujii fails to disclose the lever limitation of claim 1.
Accordingly, we do not sustain the Examiner's anticipation rejection
of claim 1, neither do we sustain the rejection of claims 2-5 that depend
therefrom.
Claims 7-12
Claim 7 is an independent claim that contains a rotatable shift lever
limitation that is substantially similar to the one at issue in claim 1. Claims
App. In rejecting claim 7 as anticipated by Fujii, the Examiner commits the
same error with respect to the meaning of "lever" that we discussed in
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connection with claim 1. Accordingly, we do not sustain the Examiner's
anticipation rejection of claim 7, neither do we sustain the rejection of
claims 8-12 that depend therefrom.
Claim 1
Unpatentability of Claims 1-20
over Nagano
The Examiner's rejection, among other things, is predicated on a
finding of fact that Nagano discloses a shift lever that is configured to be
mechanically held in a selected operating position. Final Action 7 (held in
place by friction at each operating positon).
Appellant traverses the Examiner's rejection by arguing, among other
things, that Nagano fails to disclose a shift lever that is configured to be
mechanically held in a selected operating positon after being rotated.
Appeal Br. 14. Appellant contends that Nagano teaches that its gear shift
control lever returns to its starting position after each shift and, therefore,
does not remain in a selected operating position after being rotated by being
mechanically held there. Id. at 16. Appellant contends that the Examiner's
finding that Nagano's shift lever is held in place by friction in each operating
position lacks evidentiary support. Id.
The Examiner's Final Rejection fails to cite evidence in Nagano to
support a vague and inexplicit finding that the gear shift is held in place by
friction. Final Action 7. The Examiner's Answer does not address, or
otherwise respond to, Appellant's Appeal Brief arguments concerning the
gear shift lever being configured to be mechanically held in a selected
operating position. See generally Answer.
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Nagano discloses a control device that attaches to the handlebar of a
bicycle for controlling a brake mechanism and a gear shift ( change speed)
mechanism. Nagano, Abstract. The brake mechanism is controlled by fore
and aft pivotal movement of the brake lever. Id. Gear shift is controlled by
sideways pivotal movement of the brake lever. Id. In other words, there is
only one lever. The one lever pivots fore and aft for braking and sideways
for shifting gears. Id. When the brake lever is pivoted sideways to shift
gears, it returns to its original position upon release. Id. col. 1, 11. 55---61,
col. 2, 11. 20-31.
In contrast, Appellant claims a control device with two levers, not one
lever as taught by Nagano. In Appellant's invention, the brake lever pivots
toward and away from the handlebar within a brake lever plane. Appellant's
shift lever, which is separate and distinct from the brake lever, is disposed on
the distal side of the control portion of the brake lever. The shift lever
rotates about a second axis of rotation that is substantially perpendicular to
the axis of rotation of the brake lever. Id. The shift lever may be rotated
without movement of the brake lever. The shift lever may be rotated through
a plurality of operating positions. After the shift lever is rotated to a selected
operating position, it is "mechanically held" in such operating position.
Appellant's brief put the Examiner on notice that Appellant was
challenging the Examiner's finding that Nagano satisfies that "mechanically
held" limitation of claim 1. The Examiner offers nothing in response to this
challenge. To be sustained, the Examiner's finding requires more than a
conclusory statement and, instead, requires citation to "concrete evidence in
the record." K/S Himpp v. Hear-Wear Technologies, LLC, 751 F.3d 1362,
1365 (Fed. Cir. 2014). The Examiner provides no such "concrete evidence."
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Our own independent review of Nagano confirms a lack of evidentiary
support for the Examiner's finding. Under the circumstances, we agree with
Appellant that the Examiner's rejection is not supported by the record.
Therefore, we do not sustain the Examiner's Section 103 rejection of
claim 1 over Nagano.
Claims 2-6
In view of our decision to reverse the Examiner's Section 103
rejection of claim 1 over Nagano, we also do not sustain the Section 103
rejections of claims 2-6 that depend therefrom. See In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (dependent claims are nonobvious if the
independent claims from which they depend are nonobvious).
Claim 7
Claim 7 is an independent claim that differs in scope from claim 1
primarily in that it contains a limitation directed to the shift lever including
means for operating selectively in either an index mode or a friction mode.
Claims App.
The Examiner's Final Rejection fails to make any factual findings
regarding whether Nagano includes means for operating selectively in either
an index mode or a friction mode. See generally Final Action. Moreover,
the Examiner makes no findings and provides no underlying analysis that
tends to show that it would have been obvious to modify Nagano so that it
could have operated selectively in either an index mode or a friction mode.
Id.
A proper obviousness analysis requires, among other things,
ascertaining the differences between the prior art and the claimed invention.
MPEP § 2141(II)(B); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,400
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(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). In
the Final Rejection, the Examiner lumps all of the fact findings for twenty
pending claims into a single paragraph. Final Action 7. Specific findings
with respect to key claim limitations are altogether missing in this
paragraph. Id. Particularly with respect to the index/friction mode
limitation of claim 7, there is no citation to the record as to where this
limitation is purportedly met by Nagano. Id. Having independently
reviewed Nagano, we find no evidentiary support for a finding that Nagano
teaches any means to operatively select between an index mode and a
friction mode. In short, the Examiner's findings of fact in the Final
Rejection are inadequate to provide us with any basis for upholding the
Examiner's obviousness determination. Hear-Wear, 751 F.3d at 1365.
As the Examiner failed to cite adequate evidence in support of a key
fact finding, we do not sustain the Examiner's Section 103 unpatentability
rejection of claim 7 over Nagano.
Claims 8-13
In view of our decision to reverse the Examiner's Section 103
rejection of claim 7 over Nagano, we also do not sustain the Section 103
rejections of claims 8-13 that depend therefrom. Fritch, 972 F.2d at 1266.
Claim 14
Claim 14 is an independent claim that differs in scope from claim 1
primarily in that it contains a limitation directed to the shift lever being held
in place by friction at each operating position. Claims App. As with the
rejection of claim 7 discussed above, the Examiner's Final Rejection fails to
make any factual findings regarding whether Nagano discloses holding the
shift lever in place at each operating position, whether by friction or
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otherwise. Indeed, rather than being held in place at each operating position,
Nagano discloses lever spring 20 for returning the lever to its starting
position after each gear shift. Nagano, col. 4, 11. 7-10.
As with the rejection of claim 7, our independent review of Nagano
reveals no evidentiary support for a finding that Nagano teaches holding the
shift lever in place at each operating position. The Examiner's rejection is
not supported by the record and, therefore, we do not sustain the Examiner's
Section 103 unpatentability rejection of claim 14 over Nagano. Hear-Wear,
751 F.3d at 1365.
Claims 15-20
In view of our decision to reverse the Examiner's Section 103
rejection of claim 14 over Nagano, we also do not sustain the Section 103
rejections of claims 15-20 that depend therefrom. Fritch, 972 F.2d at 1266.
DECISION
The decision of the Examiner to reject claims 1-13 under Section 112
as indefinite is reversed.
The decision of the Examiner to reject claims 1-5 and 7-12 under
Section 102 as anticipated by Fujii is reversed.
The decision of the Examiner to reject claims 1-20 under Section 103
as unpatentable over Nagano is reversed.
REVERSED
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