Ex Parte Fukao et al

Patent Trial and Appeal Board

Oct 26, 2016

13116142 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/116,142 05/26/2011
22919 7590 10/28/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Kazutaka FUKAO
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.
SN-US115104 4859
EXAMINER
ROGERS, ADAM D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUT AKA FUKAO and
YOSHIMITSU MIKI
Appeal2015-001049
Application 13/116,142
Technology Center 3600
Before JAMES P. CALVE, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1---6 and 8-11. Appeal Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b ). 1
We REVERSE.
1 Appellants' Request for Oral Hearing was filed on October 29, 2014, after
Appellants filed their Reply Brief on October 24, 2014. Because the request
was not timely (see 37 C.F.R. § 41.47(b)), the appeal was decided on the
briefs without an oral hearing (see 37 C.F.R. § 41.47(c)).
Appeal2015-001049
Application 13/116,142
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. A shift positioning mechanism comprising:
a fixed member;
a take-up member movably arranged with respect to the
fixed member in a first direction and a second direction that is
different from the first direction;
a positioning ratchet fixedly coupled to the take-up
member to move with the take-up member;
a stopping pawl having a stopping tooth and rotatably
mounted on a first rotational axis such that the stopping tooth
moves between a non-stop position and a stop position to
prevent movement of the take-up member in the first direction;
and
a positioning pawl having a positioning tooth and
rotatably mounted on the first rotational axis such that the
positioning tooth moves between a non-holding position and a
holding position to hold the take-up member in the first
direction; and
a releasing member movably arranged between a non-
releasing position and a releasing position such that the
releasing member rotates the stopping pawl and the positioning
pawl,
the releasing member rotating the stopping pawl and the
positioning pawl such that the stopping tooth starts to move
from the non-stop position to the stop position prior to the
positioning tooth starting to move from the holding position to
the non-holding position, and
the releasing member including a first contact portion
that contacts the stopping pawl when the releasing member is in
the releasing position and a second contact portion that contacts
the positioning pawl when the releasing member is in the
releasing position, the first contact portion being located farther
from the positioning ratchet that the second contact portion.
2
Appeal2015-001049
Application 13/116,142
REJECTIONS
Claims 1---6 and 8-11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Funai (US 2008/0022803 Al, pub. Jan. 31, 2008).
Claims 1---6 and 8-11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kawakami (US 7,665,382 B2, iss. Feb. 23, 2010).
ANALYSIS
Claims 1-6 and 8-11 as anticipated by Funai
Regarding claim 1, the Examiner found that Funai discloses a shift
positioning mechanism including a wire take-up member 63, stopping pawl
68, and positioning pawl 69 each mounted on a first rotational axis (pivot
axis 68a, 69a in Figure 6). Final Act. 3--4.
Appellants argue that pawl 68 and pawl 69 are mounted on separate
axes because "pawl 68 is mounted on and rotates around positioning pin 68a
and pawl 69 is mounted on and rotates around positioning pin 69a." Appeal
Br. 11. Appellants argue that Funai does not disclose a stopping pawl and a
positioning pawl that are rotatably mounted on the same first rotational axis,
as recited in claim 1. Id. Appellants illustrate their arguments on a portion
of Figure 6 of Funai, which is reproduced below. See id.
3
Appeal2015-001049
Application 13/116,142
Figure 6 of Funai is an exploded view of a bicycle control mechanism.
The portion reproduced above shows Appellants' annotations of the stopping
pawl (pawl 68) and positioning pawl (pawl 69), and their respective, spaced-
apart, and separated rotational axes (positioning pins 68a, 69a). Id.
The Examiner has not established by a preponderance of evidence that
Funai rotatably mounts a stopping pawl and a positioning pawl on the same
rotational axis. The Examiner's finding that pawls 68, 69 are "mounted on"
the same rotational axis because "[t]he axial centerline of the hole through
[mounting plate] 67 is a rotational axis" (Ans. 2) is an unreasonably broad
interpretation of "first rotational axis," as recited in claim 1.
Appellants disclose that positioning pawl 80 and stopping pawl 82 are
mounted pivotally on pivot pin 69, which defines a first rotational axis B.
Spec. i-f 68, Fig. 14. Claim 1 recites this arrangement as a stopping pawl that
is rotatably mounted on a first rotational axis and a positioning pawl that is
rotatably mounted on "the first rotational axis," i.e., the same rotational axis.
Funai discloses pawls 68, 69 are mounted on separate rotational axes.
Pawl 68 is coupled to mounting plate 67 via pin 68a, and pawl 68 is coupled
to mounting plate via pin 69a. Funai i-fi-1 72-73. Contrary to the Examiner's
stated finding, there is no disclosure in Funai that mounting plate 67 rotates.
Reply Br. 5-6. Moreover, Figure 6 shows mounting plate 67 with a tongue
that connects to a groove in shaft 40d to prevent rotation of mounting plate
67 about any purported "rotational axis" as stated in the rejection. Id. Pawls
68 and 69 are mounted rotatably on different axes (pins 68a, 69a) and do not
rotate on or about a rotational axis of mounting plate 67 in any manner.
Thus, we do not sustain the rejection of claims 1-6 and 8-11 as
anticipated by Funai.
4
Appeal2015-001049
Application 13/116,142
Claims 1-6 and 8-11 as anticipated by Kawakami
Regarding claim 1, the Examiner found that Kawakami discloses a
shift positioning mechanism with stopping pawl 68 and positioning pawl 69
that are mounted on a first rotational axis (pivot axis of 68a, 69a) as shown
in Figure 5. Final Act. 7.
Appellants argue that Kawakami suffers from the same deficiencies as
Funai because pawls 68, 69 are not rotatably mounted on the same rotational
axis. Appeal Br. 13; Reply Br. 7-8. Appellants illustrate their arguments on
a portion of Figure 5 of Kawakami, reproduced below. Appeal Br. 14.
Figure 5 is an exploded view of a bicycle control mechanism of
Kawakami. The portion above shows Appellants' annotations of a stopping
pawl (pawl 68) and a positioning pawl (pawl 69), and their respective,
spaced-apart, and separated rotational axes (positioning pins 68a, 69a). Id.
The Examiner's findings are not supported by a preponderance of
evidence, and the Examiner's interpretation of "first rotational axis" is
unreasonably broad. Kawakami discloses pawls 68, 69 rotatably mounted
on different rotational axes, i.e., positioning pins 68a, 69a. Thus, we do not
sustain the rejection of claims 1-6 and 8-11 as anticipated by Kawakami.
5
Appeal2015-001049
Application 13/116,142
DECISION
We REVERSE the rejections of claims 1---6 and 8-11.
REVERSED
6