Ex Parte Kawakami

Patent Trial and Appeal Board

Dec 18, 2014

12144719 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TATSUYA KAWAKAMI
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Appeal 2012-011020
Application 12/144,7191
Technology Center 3600
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Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–11. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

We REVERSE.

1 According to the Appellant, “the real party in interest is Shimano, Inc.”
(Appeal Br. 4.)
Appeal 2012-011020
Application 12/144,719

2
STATEMENT OF THE CASE
The Appellant’s invention relates to a bicycle component positioning
device, such as a gear shifter. (Spec. ¶¶ 1–4.)

Illustrative Claim
1. A bicycle component positioning device comprising:
a support member;
a positioning element rotatably coupled to the support
member to rotate about a main axis between a plurality of
predetermined shift positions;
a position maintaining member movably arranged with
respect to the support member to move between a holding
position that holds the positioning element in one of the
predetermined shift positions and a position releasing position
that releases the positioning element for rotational movement;
a winding element movably arranged with respect to the
support member to move between a winding position and a
disengaging position;
a release member pivotally arranged with respect to the
support member to move the position maintaining member
between the holding position and the position releasing position
in response to pivotal movement of the release member
between a neutral position and a position releasing position; and
a spring member arranged with respect to the support
member to move the winding element from the winding
position to the disengaging position in response to movement of
the release member from the neutral position to the position
releasing position and to return the release member to the
neutral position after movement of the release member from the
neutral position to the position releasing position, with the
spring member applying a biasing force to the release member
without the biasing force being transmitted through the position
maintaining member.

Appeal 2012-011020
Application 12/144,719

3
Rejections2
The Examiner rejects claims 1–11 under 35 U.S.C. § 112, second
paragraph, as indefinite.
The Examiner rejects claims 1–11 under 35 U.S.C. § 102(b), as
anticipated by Tagawa (US 5,481,934 issued Jan. 9, 1996).

ANALYSIS
Indefiniteness
Independent claim 1 sets forth a limitation which reads: “with the
spring member applying a biasing force to the release member without the
biasing force being transmitted through the position maintaining member.”
(Appeal Br., Claims App.) The Examiner deems this limitation indefinite
because it is a “functional limitation” without a recital of particular structure
that accomplishes the function. (Answer 5.) The Examiner also contends
this limitation “sets forth a scope that is not limited to the example disclosed
in the instant specification.” (Id. at 3.) We are persuaded by the Appellant’s
argument that the Examiner errors on the issue of indefiniteness. (See
Appeal Br. 16–18, Reply Br. 2–4.)
The relevant limitation recites a structure (“the spring member”) that
accomplishes a function (“applying a biasing force”) on another recited
structure (“the releasing member”) in a certain manner (“without the biasing
force being transmitted”) relative to a further recited structure (“the position
maintaining member”). We note claim language is not indefinite merely

2 The Examiner’s rejection of claim 9 under 35 U.S.C. § 112, first
paragraph, is withdrawn. (Answer 2.)
Appeal 2012-011020
Application 12/144,719

4
because it might encompass an example not expressly set forth in the
Appellant’s Specification.
Thus, we do not sustain the Examiner’s rejection of independent claim
1, and claims 2–11 depending therefrom, as indefinite.

Anticipation
Independent claim 1 sets forth a bicycle device comprising, among
other things, a “winding element,” a “release member,” and a “spring
member.” (Appeal Br., Claims App.) According to the Examiner, Tagawa
discloses a bicycle device comprising a winding element (teeth 144), a
release member (pawl holder 139), and a spring member (spring 143). (See
Final Act. 3–4.)
Independent claim 1 requires the spring member to be arranged to
move the winding element from a winding position to a disengaging position
“in response to” movement of the release member from a neutral position to
a releasing position. (See Appeal Br., Claims App.) The Examiner finds
Tawaga’s spring member (spring 143) is arranged to move its winding
element (teeth 144) as required by independent claim 1. (See Answer 7–9.)
We are persuaded by the Appellant’s argument that this finding is incorrect.
(See Appeal Br. 24–25.)
As explained below, Tagawa’s spring 143 is not arranged to move
teeth 144, in response to movement of pawl holder 139, as required by
independent claim 1. Specifically, teeth 144 do not move from a winding
position to a disengaging position “in response to” movement of pawl holder
139 from its “neutral position” to its “releasing position.”
Appeal 2012-011020
Application 12/144,719

5
The Examiner looks to both Figure 16 and Figure 19 as depicting
Tagawa’s pawl holder 139 in its “neutral position.” (See Answer 7–9.)
However, in Figure 19, pawl holder 139 is held counterclockwise by, for
example, the force of a biker’s thumb. (See Appeal Br. 21, Tagawa col. 9, ll.
37–61.) When this counterclockwise force is removed, spring 143 returns
pawl holder 139 back to the “neutral commencing point of rotation” shown
in Figure 16. (Id.)
Accordingly, we look to Figure 16 (and not Figure 19) as depicting
Tagawa’s pawl holder 139 in its “neutral position.” In Figure 16, teeth 144
are shown “disengaged” from teeth 109 of a cable-winding sleeve 107. (Id.)
In other words, when the release member (pawl holder 139) is in its “neutral
position,” the winding element (teeth 144) is in a “disengaging position.”
The Examiner looks to Figure 18 as depicting Tagawa’s pawl holder
139 in its “releasing position.” (See Answer 7–9.) In Figure 18, teeth 144
are shown “disengaged” from teeth 109 of cable-winding sleeve 107. (Id.)
In other words, when the release member (pawl holder 139) is in its
“releasing position,” the winding element (teeth 144) is in a “disengaging
position.”
Consequently, Tagawa’s winding element (teeth 144) does not move
from a disengaged position to a winding position “in response to” movement
of its release member (pawl holder 139) from the neutral position (Figure
16) to the releasing position (Figure 18). Instead, the winding element (teeth
144) remains disengaged “in response to” this movement. As such,
Tagawa’s spring 143 is not arranged to move teeth 144, in response to
movement of pawl holder 139, as required by independent claim 1.
Appeal 2012-011020
Application 12/144,719

6
Thus, we do not sustain the Examiner’s rejection of independent claim
1, and claims 2–11 depending therefrom, as anticipated by Tagawa.

DECISION
We REVERSE the Examiner’s rejections of claims 1–11.

REVERSED
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