Ex Parte KAWAKAMI

Patent Trial and Appeal Board

Apr 28, 2016

12193109 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/193,109 08/18/2008
22919 7590 05/02/2016
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Tatsuya KAWAKAMI
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-US085143 4237
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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 TATS UY A KAWAKAMI
Appeal2013-010337
Application 12/193, 109
Technology Center 3600
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tatsuya Kawakami (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-30. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R.
§ 41.47 was held on April 21, 2016.
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a cable operating mechanism
that pulls and releases an inner wire of a cable." Spec. para. 1; Figs. 2, 3,
21. Claims 1, 10, 17, and 29 are independent.
Appeal2013-010337
Application 12/ 193, 109
recite:
Claims 1, 10, and 17 are illustrative of the claimed subject matter and
1. A cable operating mechanism comprising:
a fixed member;
a wire takeup member movably mounted relative to
the fixed member;
a single position maintaining abutment non-
movably mounted directly on and directly fixed to the wire
takeup member with no relative movement therebetween,
the single position maintaining abutment and the wire
takeup member moving together as a unit relative to the
fixed member during a wire releasing operation; and
a positioning member pivotally mounted relative to
the fixed member, the positioning member having a
plurality of positioning abutments that selectively engage
the single position maintaining abutment to position the
wire takeup member in one of a plurality of predetemined
wire positions corresponding to rest positions of the wire
takeup member.
l 0. 1A'.l. cable operating mechanism comprising:
a fixed member;
a wire takeup member pivotally mounted relative to
the fixed member about a first pivot axis;
a positioning member pivotally mounted relative to
the fixed member about a second pivot axis that is offset
from the first pivot axis, the positioning member including
a plurality of positioning abutments that selectively
engage the wire takeup member and selectively maintain
the wire takeup member in one of a plurality of
predetermined wire positions corresponding to rest
positions of the wire takeup member; and
a wire releasing member including a plurality of
release abutments that selectively engage the positioning
member and move the positioning member during a wire
releasing operation of the wire releasing member, the wire
releasing member engaging a same one of the positioning
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Application 12/ 193, 109
abutments in at least two of the predetermined wire
positions of the wire takeup member.
17. A cable operating mechanism comprising:
a fixed member;
a wire takeup member pivotally mounted relative to
the fixed member;
a driven abutment fixed to the wire takeup member
with no relative movement therebetween, the driven
abutment and the wire takeup member moving together as
a unit relative to the fixed member as the wire takeup
member pivots relative to the fixed member; and
a wire pulling member movably mounted relative to
the fixed member and the wire takeup member, the wire
pulling member including a plurality of drive abutments
selectively engaging the driven abutment to drive the
driven abutment, the wire pulling member moving the
wire takeup member as the wire pulling member moves
during the wire pulling operation of the wire pulling
member.
REJECTIONS
I. Claims 9, 16, and 26 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention.
II. Claims 1-5, 7, 10-12, 14, 16-21, 23, 24, 26, and 28 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Assel (US 6,502,477 Bl; iss.
Jan. 7, 2003).
III. Claims 10, 27, 29, and 30 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Elsen (WO 95/03208 Al; pub. Feb. 2, 1995). 1
1 We derive our understanding of this reference from a machine generated
translation, which is available in the electronic file wrapper of the underlying
application. All references to the text of Elsen are to portions of the
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Application 12/ 193, 109
IV. Claims 6, 8, 9, 13, 15, 22, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Assel and Kawakami (US
2007 /0068316 Al, pub. Mar. 29, 2007).
ANALYSIS
Indefiniteness
Claims 9, 16, and 26
Each of dependent claims 9, 16, and 26 recites "the wire pulling
member and the positioning member are operatively coupled to the release
operating lever, the release operating lever moving the wire pulling member
and the positioning member together as the release operating lever moves
during the wire releasing operation." Appeal Br. 35, 36, 41, Claims App.
The Examiner determines that "[t]his limitation exemplifies a recitation of
some structure (the release operating lever) followed by its function, but
does not recite the particular structure, materials or steps that accomplish the
function." Ans. 5; see also Final Act. 2.
Appellants' Specification describes:
This pivotal movement of the wire positioning member 22
also causes the contact extension 22c of the wire positioning
member 22 to contact the contact portion 34d of the wire pulling
member 34 so as to rotate the wire pulling member 34 about the
third pivot axis A3 during the wire releasing operation. Thus,
during the wire releasing operation, the contact extension 22c
contacts the contact portion 34d so that the wire positioning
member 22 and the wire pulling member 34 move together with
the movement of the release operating lever 40.
Spec. para. 88.
translation.
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Application 12/ 193, 109
At the outset, we agree with Appellants that "[t]he contact extension
22c is part of the claimed positioning member 22 and the contact portion 34d
is part of the claimed wire pulling member 34." Appeal Br. 12 (emphasis
omitted). We further agree with Appellants that "one skilled in the art
would have [no] trouble understanding the structure that achieves [the
recited language in claims 9, 16, and 26] since that structure is already
broadly claimed, and the specification clearly elucidates the details of the
claimed structural interactions" and "the scope of the subject matter
embraced by the claims is [clear]." Id. The Examiner appears to require
that the claims specify exactly the structure that achieves the claimed
function. However, by not specifying the exact structure, the claims are
merely broad, not ambiguous. See In re Johnson, 558 F.2d 1008, 1016 n.17
(CCP A 1977) (providing that breadth is not indefiniteness).
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 9, 16, and 26 as indefinite.
Anticipation by Assel
Claims 1-5 and 7
Independent claim 1 recites, in relevant part, "a single position
maintaining abutment non-movably mounted directly on and directly fixed
to the wire takeup member." Appeal Br. 33, Claims App. The Examiner
finds that Ass el teaches " [a] [ s] ingle position maintaining abutment ( 14)
non-movably mounted directly on and fixed to the wire takeup member
(see direct engagement between 14 and teeth 9 upon wire takeup member
3[)]." Final Act. 3. The Examiner further finds that detent nose 14 of
Assel is "non-movably mounted directly on and directly fixed to" actuating
part 3 when detent nose 14 is engaged with actuating part 3 via teeth 9 of
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Application 12/ 193, 109
detent disk 17 when the parts "are not in motion" (i.e., at rest). Ans. 7; see
also Appeal Br. 14.
Assel teaches that (1) "[t]he actuating part 3 has a first detent disk 16
with a first toothed segment 8 and a second detent disk 17 with a second
toothed segment 9" (Assel, col. 2, 11. 55-58, Fig. 1 ); and (2) "a detent
element 12 having a first detent nose 13 and a second detent nose 14" (id.
at col. 3, 11. 1-3, Fig. 2). We agree with Appellants that Assel "does not
teach directly mounting and directly fixing [] detent nose 14 to [] actuating
part 3 non-movably." Appeal Br. 15. Further, a skilled artisan would not
reasonably consider engagement of detent nose 14 of Assel with actuating
part 3 when the parts "are not in motion" (i.e., at rest) to mean that detent
nose 14 is "non-movably mounted directly on and directly fixed to"
actuating part 3 as claimed. Based on the foregoing reasons, the Examiner
fails to establish by a preponderance of the evidence that Assel anticipates
the cable operating mechanism of claim 1.
Accordingly, we do not sustain the Examiner's rejection of claims 1-5
and 7 as anticipated by Assel.
Claims 10--12, 14, and 16
Independent claim 10 recites, in relevant part, "the positioning
member including a plurality of positioning abutments that selectively
engage the wire takeup member" and "the wire releasing member engaging
a same one of the positioning abutments [of the wire takeup member]."
Appeal Br. 36, Claims App. The Examiner finds that Assel teaches that
"positioning member [ 12] include[ s] a plurality of positioning abutments
(12, 14, 13, 20) that selectively engage []wire takeup member [3]" "the
wire releasing member [19] engaging a same one (20) of the positioning
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abutments [of the wire takeup member]." Final Act. 5---6; see also Ans. 8.
We agree with the Examiner that detent noses 13, 14 of detent
element (positioning member) 12 constitute positioning abutments that
engage actuating part (wire takeup member) 3. Final Act. 5; see also Assel,
col. 3, 11. 14--21, Figs. 1, 2. However, extension 20 of detent element
(positioning member) 12 engages/interacts with cam contour (wire
releasing member) 19 of release lever 10 but does not engage actuating part
(wire takeup member) 3. See Assel, col. 3, 11. 12-14, Figs. 1-3; see also
Appeal Br. 1 7. Because extension 20 of detent element (positioning
member) 12 does not engage actuating part (wire takeup member) 3, we
agree with Appellants that cam counter (wire releasing member) 19 of
Assel "does not engage a same one of the positioning abutments [of
actuating part (wire takeup member) 3]." Appeal Br. 17; see also Final
Act. 5-6; Ans. 8. As such, the Examiner fails to establish by a
preponderance of the evidence that Assel anticipates the cable operating
mechanism of claim 10.
Accordingly, we do not sustain the Examiner's rejection of claims 10-
12, 14, and 16 as anticipated by Assel.
Claims 17-21, 23, 24, 26, and 28
Independent claim 17 recites, in relevant part, "a driven abutment
fixed to the wire takeup member with no relative movement there between."
Appeal Br. 38, Claims App. The Examiner finds that Assel teaches "[a]
[d]riven abutment (1, 6, 25, 26) fixed to the wire takeup member [3] with
no relative movement there between (during a winding operation, portion 6
is engaged and rotates with wire takeup member 3, there being no relative
movement)." Final Act. 7; see also Ans. 9.
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Application 12/ 193, 109
Assel teaches that ( 1) "actuating part 3 [] can be moved by an
actuating lever 1 and by a release lever 10" (Assel, col. 2, 11. 51-52
(emphasis added), Fig. 1); and (2) "[t]he actuating part 3 can be turned by
the actuating lever 1 by means of a pawl 6, which engages in toothing 7
connected rotationally to the actuating part 3. When the actuating lever 1 is
moved, this movement is transmitted to the actuating part 3 by the pawl 6"
(id. at col. 2, 11. 60-64 (emphasis added), Fig. 1 ). We agree with
Appellants that "there is relative movement between the driving pawl 6
(the actuating lever 1) and[] actuating part 3." Appeal Br. 19. We further
agree with Appellants that actuating lever 1 is "not fixed" to actuating part
3, "even if the two rotate together during some portion of a wire winding
operation." Id. Based on the foregoing reasons, the Examiner fails to
establish by a preponderance of the evidence that Assel anticipates the
cable operating mechanism of claim 17.
Accordingly, we do not sustain the Examiner's rejection of claims 17-
21, 23, 24, 26, and 28 as anticipated by Assel.
Anticipation by Elsen
Claims 10, 27, 29, and 30
Independent claim 10 recites, in relevant part, "the positioning
member including a plurality of positioning abutments that selectively
engage the wire takeup member" and "the wire releasing member engaging
a same one of the positioning abutments [of the wire takeup member]."
Appeal Br. 36, Claims App. The Examiner finds that Elsen teaches that
positioning member ( 40, 43, 55) includes "a plurality of positioning
abutments (a-k; 45, 56) that selectively engage the wire takeup member
[34] (abutment 37 engages positioning member 40, elements 55 and 43
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Appeal2013-010337
Application 12/ 193, 109
engage the wire takeup member 34 since all elements are integrally
connected)." Final Act. 10-11. The Examiner further finds that "wire
releasing member 4 7 would inherently [engage] the very same positioning
abutment 56 [of wire takeup member 34]." Ans. 12 (citing Elsen, p. 7).
In this case, we agree with Appellants that tooth (positioning
abutment) 56 of Elsen does not engage oscillating lever (wire takeup
member) 34; thus, shift lever (wire releasing member) 47 of Elsen "does
not engage a same one" of the positioning abutments of oscillating lever
(wire takeup member) 34. See Reply Br. 15; see also Elsen, Fig. 5. As
such, the Examiner fails to establish by a preponderance of the evidence
that Elsen anticipates the cable operating mechanism of claim 10.
Independent claim 29 includes the same limitations discussed above
for claim 10. See Appeal Br. 41--42, Claims App. The Examiner relies on
the same unsupported findings for claim 29 as claim 10. See Final Act. 11-
12; see also Ans. 12. Thus, the Examiner's findings with respect to Elsen
are deficient for claim 29 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 10 and 29 and their respective
dependent claims 27 and 30 as anticipated by Elsen.
Obviousness over Assel and Kawakami
Claims 6, 8, 9, 13, 15, 22, and 25
The Examiner's rejection of claims 6, 8, 9, 13, 15, 22, and 25 as
unpatentable over Assel and Kawakami is based on the same unsupported
findings discussed above with respect to independent claims 1, 10, and 17.
See Final Act. 13-16. The Examiner does not rely on Kawakami to remedy
the deficiency of Assel. Accordingly, for similar reasons, we do not sustain
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the Examiner's rejection of claims 6, 8, 9, 13, 15, 22, and 25 as unpatentable
over Assel and Kawakami.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-30.
REVERSED
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