Ex Parte Fujii

Board of Patent Appeals and Interferences

Jan 31, 2007

09766696 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUHIRO FUJII
____________
Appeal No. 2006-0985
Application No. 09/766,696
____________
ON BRIEF
_____________

Before PATE, OWENS and BAHR, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-16, 66, 67, 69 and 77-
82. Claims 19-65 and 74-76 stand withdrawn from consideration. Claims 68 and
70-73 have been previously allowed. Claims 17 and 18 were allowed by the
examiner in the answer at page 2. These are all the claims in the application.
The claimed invention is a bracket for mounting a separate, self-contained
motor that controls the bicycle transmission to a bicycle frame. The bracket has a
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base for reception of the motor and first and second bracket supports for
attachment to the bicycle chain stay.
Claim 82, reproduced below, is further illustrative of the claimed subject
matter.
82. A bracket apparatus for mounting a separate self-contained motor that
controls a bicycle transmission to a bicycle frame, wherein the frame has a bottom
bracket shell, a seat tube extending upwardly relative to the bottom bracket shell, a
first chain stay extending rearwardly relative to the seat tube and a first seat stay
extending rearwardly relative to the seat tube above the first chain stay, wherein
the apparatus comprises:

a bracket base dimensioned for supporting the motor at least partially above
the first chain stay and at least partially below the first seat stay such that the motor
can be removed as a unit from the bracket base;

wherein the bracket base has an upper surface that supports the motor as to
receive a vertically downwardly directed force component from a portion of the
motor mounted above it;

a first bracket support for coupling the bracket base to at least one of the first
chain stay and the first seat stay; and

a second bracket support for coupling the bracket base to at least one of the
first chain stay, the seat tube, and the bottom bracket shell.

The references relied upon by the examiner as evidence of anticipation and
obviousness are:
Chappell 4,599,079 Jul. 8, 1986
Ethington 5,681,234 Oct. 28, 1997
Claims 1-16, 66, 67, 69 and 77-82 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ethington in view of Chappell.
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ISSUES
Appellant advances two contentions with respect to the examiner’s rejection.
Appellant contends that it would not have been obvious to position Ethington’s
power unit 50 on a chain stay. Appellant further contends that neither reference
teaches a control device which can be removed as a unit from the claimed bracket.
Accordingly, the sole issue presented in this appeal is whether the examiner has
established, by a preponderance of evidence, the prima facie obviousness of claims
1-16, 66, 67, 69 and 77-82.
FINDINGS OF FACT
Ethington discloses a control device for a bicycle transmission. The control
device 50 is mounted with clamp bands 58 to the down tube of the bicycle frame.
Figure 5 shows the power unit in detail. The power unit has two reversible rotary
electric servo motors 112 which operate lead screws to reciprocate cables 66 and
68. A battery compartment 51 is removably mounted on the power unit 50.
Chappell also describes an automatic shifter for a derailleur which is
operated by the conventional cables normally found on a bicycle. The automatic
shifter is connected to a bicycle chain stay 38 by means of a bent connecting
finger 46.
Ethington differs from the claimed subject matter in that it does not show a
separate bracket and a removable control device, and the control device of
Ethington is installed on the drop tube rather than on the chain stay. Chappell
differs from the claimed subject matter in that Chappell does not disclose a
removable control device nor does it show a horizontal bracket base. However
Chappell is located on a bicycle chain stay as the claims require.
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Principles of Law
A claimed invention is unpatentable if the differences between it and the
prior art are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the pertinent art.
In re Kahn, 441 F3d. 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir. 2006) citing
35 U.S.C. § 103(a) (2000); Graham v. John Deere Co., 383 U.S. 1, 13-14 ,148
USPQ 459, 467 (1966). The ultimate determination of whether an invention would
have been obvious is a legal conclusion based on underlying findings of fact. Id.
(citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999)).
In assessing whether subject matter would have been non-obvious under
§ 103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. Kahn at 985, 78 USPQ2d at 1335. The Board determines “‘the scope
and content of the prior art,’” ascertains “‘the differences between the prior art and
the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’”
Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
(quoting Graham, 383 U.S. at 17, 148 USPQ at 467). Against this background, the
Board determines whether the subject matter would have been obvious to a person
of ordinary skill in the art at the time of the asserted invention. Id. (Citing
Graham, 383 U.S. at 17, 148 USPQ 467). In making this determination, the Board
can assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unresolved needs, failure of others, etc.” Id.,
383 at 17-18, 148 USPQ at 1335; accord In re Rouffett, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). We have explained that to reject claims in
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an application under section 103, an examiner must show an unrebutted prima
facie case of obviousness. On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness. Id. (citing Rouffett, 149 F.3d at 1355, 47 USPQ2d at 1456).

Analysis
As noted above, the examiner is reading the case of power unit 50 including
the upper flat surface of the bottom wall as the bracket. Appellant argues that there
is no teaching of making a control device removable from the bracket as a unit as
required in the independent claims. The examiner has stated that the ability of the
motor to be removed is a function of the motor design and not of the support. Be
that as it may, it is still a claimed feature of the invention on appeal and all claim
features must be present or taught by the prior art to establish the prima facie
obviousness of the claims on appeal. Inasmuch as we agree with the appellant that
neither reference teaches a control device that can be removed as a unit from the
bracket base, we are constrained to reverse the examiner’s rejection on appeal.

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Conclusion of Law
For the foregoing reasons, the examiner has not established the prima facie
obviousness of all claims on appeal.

ORDER
The rejection of all claims on appeal is reversed.
REVERSED

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0985
Application No. 09/766,696

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