Ex Parte Kawakami

Patent Trial and Appeal Board

Aug 18, 2017

10711611 (P.T.A.B. Aug. 18, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/711,611 09/28/2004 Tatsuya Kawakami SIC-04-032 5610
29863 7590
DELAND LAW OFFICE
P.O. BOX 69
KLAMATH RIVER, CA 96050-0069
EXAMINER
LUONG, VINH
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
bdeland 1992 @gmail.com
jdeland @ sisqtel.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATSUYA KAWAKAMI
Appeal 2015-002321
Application 10/711,611
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tatsuya Kawakami (Appellant) appeals under 35U.S.C. § 134 from
the Examiner’s final decision rejecting claims 1, 3—21, 23, 24, and 26-35.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claim 22 is pending, but has been withdrawn from consideration. Final
Act. 1.
Appeal 2015-002321
Application 10/711,611
BACKGROUND
Sole independent claim 1, reproduced below, represents the claimed
invention.
1. An apparatus for reducing an engaging force of an
engaging member for a bicycle component comprising:
a mounting member;
a first engaging member;
a movable second engaging member that moves relative
to the mounting member in a first direction and in a second
direction opposite the first direction;
wherein the first engaging member engages the second
engaging member; and
a biasing mechanism that applies a biasing force to the
first engaging member at a first biasing location on the first
engaging member so that the first engaging member engages
the second engaging member;
wherein, while the first engaging member engages the
second engaging member and the second engaging member
moves, the biasing mechanism changes the location of the
application of the biasing force from the first biasing location
on the first engaging member to a different second biasing
location on the first engaging member so that an engaging
force applied between the first engaging member and the
second engaging member when the biasing mechanism applies
the biasing force to the second biasing location is less than the
engaging force applied between the first engaging member and
the second engaging member when the biasing mechanism
applies the biasing force to the first biasing location; and
wherein the biasing force is always applied to the first
engaging member as the second engaging member moves
through the entire range of operating movement of the second
engaging member in the first and second directions.
Appeal Br. 44 (Claims App.) (emphasis added).
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Appeal 2015-002321
Application 10/711,611
REJECTIONS2
Claims 1, 3—21, 23, 24, and 26—31 stand rejected under 35 U.S.C. §
1023(a) as unpatentable over Campagnolo (US 5,791,195, iss. Aug. 11,
1998) and Hiura (US 6,508,341 Bl, iss. Jan. 21, 2003). Final Act. 3.
Claims 1, 3—18, and 27 stand rejected on the ground of non-statutory
type double patenting as unpatentable over claims 58, 63—66, 70, and 71 of
Kawakami (US 7,882,763 B2, iss. Feb. 8, 2011) in view of Hiura. Final Act.
9.
Claims 32—35 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamasaki (US 4,232,564, iss. Nov. 11, 1980) and Calendrille (US
6,862,948 Bl, iss. Mar. 8, 2005). Final Act. 10.
OPINION
Obviousness over Campagnolo and Hiura
The Examiner finds that Campagnolo discloses the limitations of
claim 1, including a biasing mechanism applying a biasing force to a first
engaging member at a first biasing location on the first engaging member so
that the first engaging member engages a second engaging member. Final
Act 3. The Examiner finds that Campagnolo does not disclose
while the first engaging member engages the second engaging
member and the second engaging member moves, the biasing
mechanism changes the location of the application of the
biasing force from the first biasing location ... to a different
second biasing location on the first engaging member so that an
engaging force applied between the first engaging member and
the second engaging member when the biasing mechanism
applies the biasing force to the second biasing location is less
2 The rejection of claims 1, 3—21, 23, 24, and 26—35 under 35 U.S.C. § 112,
second paragraph, has been withdrawn. Ans. 2.
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Appeal 2015-002321
Application 10/711,611
than the engaging force applied between the first engaging
member and the second engaging member when the biasing
mechanism applies the biasing force to the first biasing
location.
Final Act. 2.
The Examiner finds, however, that Hiura discloses an “elongated slot
20/26 formed on the first engaging member/pawl 4/5” to change the biasing
force application location of the biasing mechanism 6/7 from the first
biasing location to a second biasing location. Id. The Examiner concludes
that it would have been obvious to “form the slot on the first engaging
member of Campagnolo” to “change the location of the application of the
biasing/urging force of the biasing mechanism from the first biasing location
to the different second biasing location as taught or suggested by Hiura.” Id.
The Examiner contends that forming a slot “on the first engaging member of
Campagnolo would not have been uniquely challenging to a person of
ordinary skill in the art because it is no more than ‘the simple substitution of
one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement,’” yielding no
more than a predictable result. Id.
Appellant argues that Hiura’s slot 20/26 fails to change the biasing
force application location from a first biasing location to a second biasing
location. Appeal Br. 19. Appellant explains that the position of each of
Hiura’s “stop portions (6b) and (7b) relative to their respective latch pawl
member (4) and position changing member (5) never change,” such that “the
location of the application of the biasing forces on latch pawl member (4)
and position changing member (5) by springs (6) and (7) likewise never
change.” Id. (emphasis omitted). Claim 1 recites the biasing mechanism
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Appeal 2015-002321
Application 10/711,611
changing the biasing force application location from a first biasing location
on the first engaging member to a different second biasing location on the
first engaging member. According to Appellant, Hiura neither discloses nor
suggests a modification to Campagnolo that would facilitate changing the
biasing force application location on Campagnolo’s pawl 20. Id.
The Examiner responds that “Appellant’s allegation that Hiura
specifically teaches keeping the biasing locations fixed is unsupported by
substantial evidence.” Ans. 4—5. According to the Examiner, Hiura’s spring
6/7 is similar to Appellant’s spring 175 and Hiura’s slot 20 that is similar to
Appellant’s slot 114 “in order to vary the position of Hiura’s pawl 4/5 from
the ‘reverse position’ to the ‘forward position.” Id. at 5. The Examiner then
argues that, as Hiura’s pawl moves from a reverse position to a forward
position, the position at which its spring 6/7 is contacted with Hiura’s pawl
4/5 is changed, such that “the biasing force of Hiura’s spring 6/7 is
changed/varied therewith in the same manner as Appellant’s biasing force.”
Id.
Appellant replies that the Examiner erred in finding that the position
at which its spring 6/7 is contacted with Hiura’s pawl 4/5 changes.
Appellant is correct. Although Hiura’s spring 6/7 biases its respective pawl
4/5 into forward and reverse positions, it does not follow that the position at
which Hiura’s spring 6/7 contacts its respective pawl 4/5 changes. Rather, it
is the direction of bias that changes in Hiura. The Examiner’s finding, that
Hiura discloses a biasing mechanism that changes the location of the
application of the biasing force, is in error. This finding forms the basis for
rejecting all of the claims subject to the rejection over Campagnolo and
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Appeal 2015-002321
Application 10/711,611
Hiura. We do not sustain the rejection of claims 1, 3—21, 23, 24, and 26—31
as unpatentable over Campagnolo and Hiura.
Obviousness-Type Double Patenting
The Examiner rejects claims 58, 63—66, 70, and 71 on the ground of
obviousness-type double patenting over Kawakami in view of Hiura. The
Examiner’s rejection relies on an erroneous finding regarding the disclosure
of Hiura. We therefore do not sustain the double patenting rejection.
Obviousness Yamasaki and Calendrille
Claims 32—35 stand rejected as unpatentable over Yamasaki and
Calendrille. Claims 32—35 depend directly or indirectly from claim 1 and
therefore contain all of the limitations of claim 1. Thus, claims 32—35
include the limitation of a biasing mechanism that changes a biasing force
application location as recited in claim 1. In setting forth this rejection, the
Examiner fails to find that either Yamasaki or Calendrille discloses a biasing
mechanism that changes a biasing force application location. Lacking this
fundamental finding, we do not sustain the rejection of claims 32—35 as
unpatentable over Yamasaki and Calendrille.
DECISION
We REVERSE the rejection of claims 1, 3—21, 23, 24, and 26—31
under 35 U.S.C. § 1023(a) as unpatentable over Campagnolo and Hiura.
We REVERSE the rejection of claims 32—35 under 35 U.S.C. §
103(a) as unpatentable over Yamasaki and Calendrille.
REVERSED
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