Ex parte Nagano

Board of Patent Appeals and Interferences

Feb 26, 1999

08282783 (B.P.A.I. Feb. 26, 1999)

Application for patent filed July, 25, 1994. According1
to appellant, the application is a continuation of Application
08/034,213, filed March 19, 1993, now abandoned, and a
continuation of Application 07/633,767, filed December 26,
1990, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 54
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MASASHI NAGANO
________________
Appeal No. 96-4094
Application 08/282,7831
________________
HEARD: FEBRUARY 8, 1999
________________
Before MEISTER, STAAB and GONZALES, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
Appeal No. 96-2094
Application 08/282,783
In claims 3 and 9, next to the last line of each,2
“divided” should be inserted after “cable” to improve the
readability of the claim. In claim 12, we understand “the
stroke start end” and “the stroke finish end” in the last two
lines thereof as referring to, respectively, the “stroke start
position” and the “stroke end position” recited earlier in the
claim. In claim 10 “said cable connecting portion” should be
changed to “said cable connector” for consistency with the
terminology employed in claim 12, from which claim 10
ultimately depends. In claim 13, line 20, “the cable
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rejection of claims 2, 3 and 5-14. No other claims are
pending in the application. An amendment filed subsequent to
the final rejection (Paper No. 40, filed October 13, 1995)
effecting several minor changes in claim language has been
approved for entry by the examiner (see advisory letter (Paper
No. 42, mailed November 14, 1995)); however, the amendment has
not been clerically entered. The examiner should attend to
this matter when the application is returned to his
jurisdiction.
Appellant’s invention pertains to a control lever for
controlling a cable actuated brake of a bicycle, and in
particular to a control lever wherein the force transmitted to
the cable by the lever varies in accordance with the position
of the lever. Claim 12 is representative of the appealed
subject matter and reads as follows:2
Appeal No. 96-2094
Application 08/282,783
connector” should be changed to “the cable connecting
portion,” again for consistency with the terminology employed
earlier in that claim. While these minor errors do not
obscure the metes and bounds of the claims, correction thereof
is recommend in the event of further prosecution.
Our understanding of this foreign language reference is3
derived from a translation prepared in the Patent and
Trademark Office. A copy of that translation is attached to
this decision.
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12. A brake control apparatus for a bicycle comprising:
a lever axis;
a control cable;
a control lever pivotable about the lever axis between a
stroke start position and a stroke end position;
a guide cam surface; and
a cable connector coupled to the control cable and
disposed within the guide cam surface, wherein the guide cam
surface is arranged so that a distance between the cable
connector and the lever axis decreases and then increases as
the control lever moves between the stroke start end and the
stroke finish end.
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 are:
Bourret 4,889,610 Feb. 13, 1990
Leleu 1,210,326 Mar. 8, 19603
(French Patent Document)
Appeal No. 96-2094
Application 08/282,783
In that claim 6 was rejected as being unpatentable over4
Leleu alone in rejection (d), it is not clear why it was not
included in this rejection.
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The following rejections are before us for review:
(a) claims 2, 3, 5 and 7-14, under 35 U.S.C. § 112, first
paragraph, as being based on a specification that “fail[s] to
provide an adequate written description of the invention . . .
and . . . does not provide support for the invention as is now
claimed” (final rejection, page 4);
(b) claims 2, 3, 5-14, under 35 U.S.C. § 112, second
paragraph, “as being indefinite” (final rejection, page 6) and
“as prolix since they contain long recitations or unimportant
details which hide or obscure the invention” (final rejection,
page 7);
(c) claims 2, 3 and 6-14, under 35 U.S.C. § 102(b), as
being anticipated by Leleu;
(d) claims 2, 3 and 5-14, under 35 U.S.C. § 103, as being
unpatentable over Leleu; and
(e) claims 2, 3, 5 and 7-14, under 35 U.S.C. § 103 as4
being unpatentable over Leleu in view of Bourret.
Appeal No. 96-2094
Application 08/282,783
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The rejections are explained in the final rejection
(Paper No. 37, mailed June 13, 1995) and the examiner’s answer
(Paper No. 44, mailed December 13, 1995).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 43, filed November 1, 1995) and the reply
brief (Paper No. 45, filed February 13, 1996).
The 35 U.S.C. § 112, first paragraph, rejection
Looking at the examiner’s rejection of claims 2, 3, 5 and
7-14 under 35 U.S.C. § 112, first paragraph, we initially note
that the description requirement found in the first paragraph
of 35 U.S.C. § 112 is separate from the enablement requirement
of that provision. See, for example, Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17
(Fed. Cir. 1991) and In re Wilder, 736 F.2d 1516, 1520, 222
USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209
(1985). In the present instance, we understand the examiner’s
rejection to be based on the description requirement of the
Appeal No. 96-2094
Application 08/282,783
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first paragraph.
With respect to the description requirement found in the
first paragraph of 35 U.S.C. § 112,
[t]he test for determining compliance with the
written description requirement is whether the
disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor
had possession at that time of the later claimed
subject matter, rather than the presence or absence
of literal support in the specification for the
claim language. The content of the drawings may
also be considered in determining compliance with
the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983) (citations omitted; emphasis added).
After review of appellant’s specification and drawings as
originally filed, it is our determination that such
specification and drawings, although not a model of clarity,
nevertheless do describe or otherwise provide “written
description” support for the presently claimed subject matter.
The examiner’s primary concerns (final rejection, pages 3-5)
in this matter appear to be founded on an alleged lack of
adequate written description for the claim terminology calling
Appeal No. 96-2094
Application 08/282,783
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for (1) a distance between the cable connector and the lever
axis that decreases and then increases as the control lever
moves, and (2) the control lever moving between stroke start
and stroke finish ends. The examiner’s concerns are
unfounded. The specification at page 10, lines 11-19, page
11, line 14 through page 12, line 1, and page 19, lines 1-5
satisfies the § 112, first paragraph, description requirement
with respect to (1). The discussion on page 16 of the
specification concerning the stroke start position and the
stroke finish position and how these positions may be adjusted
satisfies the § 112, first paragraph, description requirement
with respect to (2). Accordingly, we will not sustain this
rejection.
The 35 U.S.C. § 112, second paragraph, rejection
Turning to the examiner’s rejection of claims 2, 3 and 5-
14 under 35 U.S.C. § 112, second paragraph, we make note that
the second paragraph of 35 U.S.C. § 112 merely requires that
the claims define the metes and bounds of the invention with a
reasonable degree of precision and particularity. In
Appeal No. 96-2094
Application 08/282,783
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evaluating a claim for compliance with the second paragraph of
§ 112, the content of the claim must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art
and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in
the pertinent art. See In re Johnson, 558 F.2d 1008, 1016,
194 USPQ 187, 194 (CCPA 1977).
In that light, in this particular case we believe that
one of ordinary skill in the art viewing the applied prior art
and appellant’s disclosure, would understand the scope of
appellant’s independent claims 12 and 13. While the examiner
makes much of the language “a distance between the cable
connector and the lever axis” found in claim 12 and the
similar language appearing in claim 13, we are convinced that
the ordinarily skilled artisan would understand this
terminology to be a reference to the
variable distance separating the lever shaft 3 and cam
follower 16 as the lever moves through its stroke.
Similarly, the examiner’s contention that the presence of
the terms “pivotable” in claim 12 and “movable” in claim 13
Appeal No. 96-2094
Application 08/282,783
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makes the claims indefinite “since it is impossible to
determine whether the claimed control lever 4 is structurally
required to be pivoted and moved through a cable pulling
stroke based on the context of the claims per se” (answer,
page 8; emphasis in original) is not well taken. First, the
contention is founded on the erroneous assumption that claims
should be read in a vacuum. However, as noted above, in
evaluating a claim for compliance with the second paragraph of
§ 112, the content of the claims must be analyzed in light of
the underlying application disclosure as it would be
interpreted by the ordinarily skilled artisan. In re Johnson,
558 F.2d at 1016, 194 USPQ at 194. Second, the examiner
appears to be of the view that the use of functional language
in claim drafting is per se improper. However, there is
nothing intrinsically wrong with claiming something in terms
of what it does rather that what it is. In re Swinehart, 439
F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971). While the
appealed claims may not employ language preferred by the
examiner, this circumstance does not make them indefinite.
Instead, it simply makes them broad. Breadth, however, is not
Appeal No. 96-2094
Application 08/282,783
Pursuant to 37 CFR § 1.75(d)(1), the examiner may wish5
to have appellant amend the specification to provide
antecedent basis therein for any terms in the claims that the
examiner regards as lacking such support.
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to be equated with indefiniteness. See, for example, In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).
As to the examiner’s concerns regarding terms such as
”the stroke start end” and “the stroke finish end” in claim
12, “a guide cam surface” in claims 6 and 12, and “a slot” in
claim 13, this basis for the rejection under § 112, second
paragraph, does not appear to come from any particular
difficulty with the terminology employed in the claims but,
instead, seems to be based upon the examiner’s opinion that
there may be no strict antecedent basis in the specification
and/or preceding claim language for the terms in question.
While we appreciate the examiner’s concerns in this regard, it
is our view that the minor inconsistencies in claim language
noted by the examiner are not such to prevent one of ordinary
skill in the art from understanding the metes and bounds of
independent claims 6, 12 and 13, or claim 2, 7 and 8 that
dependent from claim 12, especially when the claim language is
read in light of appellant’s specification as a whole.5
Appeal No. 96-2094
Application 08/282,783
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On page 7 of the final rejection, the examiner states
that the appealed claims “are rejected as prolix since they
contain long recitations or unimportant details which hide or
obscure the invention. See MPEP 706.03(g).” We simply do not
agree with the examiner’s generalized assertion that the
claims are confusing because of their length or because they
recite unspecified “unimportant details.” Furthermore, the
section of the manual cited by the examiner in support of this
rationale no longer appears in the latest revision thereof.
Accordingly, the examiner’s “prolix” rationale is not well
taken.
In light of the foregoing, we will not sustain the
standing 35 U.S.C. § 112, second paragraph, rejection of
claims 2, 6-8, 12 and 13.
We reach an opposite conclusion with respect to claims 3
and 9. Claim 12, from which each of these claims ultimately
depends, calls for a brake control apparatus comprising a
guide cam surface (element 15) and a cable connector (element
13, 16, 17) coupled to a control wire and disposed in the
guide cam surface so that the distance between the cable
connector and the lever axis decreases and then increases as
Appeal No. 96-2094
Application 08/282,783
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the control lever pivots. Each of claims 3 and 9 adds to the
claim 12 apparatus “a force
transmission ratio adjuster mechanism” for effecting a change
in the force applied to the cable by the lever as the lever
pivots. It is not clear whether the force transmission ratio
adjuster mechanism of claims 3 and 9 is the same as the guide
cam surface and cable connector of claim 12, a mechanism in
addition to and independent of these elements, or a mechanism
that includes the guide cam surface and cable connector as
well as other unspecified additional elements. We therefore
will sustain the standing 35 U.S.C. § 112, second paragraph,
rejection of claims 3 and 9, as well as claims 5, 10, 11 and
14 that depend therefrom.
The rejections based on prior art
Considering next the examiner’s anticipation rejection of
claims 2, 3 and 6-14 based on Leleu, independent claim 12
requires that the guide cam “is arranged so that a distance
between the cable connector and the lever axis decreases and
then increases as the control lever moves between the stroke
start end and the stroke finish end.” Independent claims 6
Appeal No. 96-2094
Application 08/282,783
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and 13 contain similar language. The examiner contends on
page 8 of the final rejection that “[t]he functional
statement[s] such as ‘whereby’, ‘so that’ and ‘wherein’
clauses in claims 6, 12-14 cannot serve to distinguish claims,
which are not process claims, from [the] reference since it
does not [sic, they do not] define any structure.” The
examiner also contends on page 10 of the answer that “Leleu’s
guide cam surface [5c or 13b] is similar to appellant’s guide
cam surface, thus, it inherently achieves the
same ‘interrelationship of components’ [called for] in
appellant’s claims.” We do not agree with either contention.
First, the examiner’s contention that the “so that”
clause in claim 12, and the similar language in claims 6 and
13, cannot serve to distinguish over the prior art is
incorrect. See, for example, In re Swinehart, 439 F.2d at
212, 169 USPQ at 228-29 (“. . . any concern over the use of
functional language at the so-called point of novelty . . . to
distinguish over a reference disclosure by emphasizing a
property or function which may not be mentioned by the
reference . . . is misplaced.”). Second, the examiner’s
contention that Leleu’s guide cam surface 5c or 13b is
Appeal No. 96-2094
Application 08/282,783
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inherently capable of functioning in the manner called for in
the claims because the reference cam surface is “similar to”
appellant’s guide cam likewise is not well taken. The
examiner has not set forth any evidence or sound technical
reasoning to establish the reasonableness of his conclusion
that the asserted characteristic will necessarily occur in the
operation of Leleu’s device and, in our opinion, the shape of
Leleu’s cam surfaces as
illustrated in the drawings is such that the operation called
for in the claims will not occur. Hence, we will not sustain
the examiner’s anticipation rejection of claims 2, 3 and 6-14
based on Leleu.
Turning to the obviousness rejection of the appealed
claims based on Leleu alone, we appreciate that Leleu
discloses a control lever for controlling a cable actuated
brake of a bicycle wherein guide cam surface 5c or 13b thereof
may be given a profile to achieve a relatively large
displacement of the cable per unit rotation of the lever at
the beginning of the lever’s stroke and a smaller displacement
of the cable per unit rotation of the lever at the end of the
Appeal No. 96-2094
Application 08/282,783
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lever’s stroke. We also appreciate that Leleu broadly teaches
that this cam profile may be modified to fine tune the cable
actuator to a particular situation (see, for example, page 7,
lines 15-21, of the translation). However, we do not agree
with the examiner that these broad teachings would have
suggested to one of ordinary skill in the art a guide cam
surface wherein the distance between the cable connector and
the lever axis first decreases and then increases during the
stroke of the lever, as now claimed, since this type of
arrangement would run counter to the type of
operation desired by Leleu (translation, page 7, lines 6-9)
wherein displacement of the cable relative to lever movement
is smallest at the end of the lever’s stroke. Accordingly, we
will not sustain the standing § 103 of claims 2, 3, 5-14 as
being unpatentable over Leleu.
As to the standing § 103 rejection based on Leleu in view
of Bourret, Bourret pertains to a two-stage throttle control
lever for a recreational vehicle such as a snowmobile. The
primary object of Bourret (column 1, lines 12-44) is to
provide a throttle control lever wherein the throttle
Appeal No. 96-2094
Application 08/282,783
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mechanism requires a lower force to be applied by the operator
during the normal operating range of the throttle lever to
thereby prevent undue fatigue to the operator, even at the
expense of a much greater force being required at high
throttle openings corresponding to high speed operation which
is typically encountered for only relatively short
intermittent periods of time. To this end, in a first stage
of operation of Bourret’s device corresponding to normal
cruising speeds, the throttle lever 26 pivots about a first
pivot axis 31 wherein the mechanical advantage of the manual
actuating force is relatively high, thereby requiring less
input force by the operator, whereas in a second stage of
operation corresponding to high speed operation, the throttle
lever pivots about a second pivot axis 30 wherein the
mechanical advantage of the manual actuating force is much
smaller, thus requiring a higher input force by the operator.
Based on the dissimilarity of purpose and operation of
the applied references, it is not apparent to us why one of
ordinary skill in the art would turn to Bourret’s two-stage
throttle control lever in the first instance for guidance in
Appeal No. 96-2094
Application 08/282,783
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modifying the Leleu device. However, even if the ordinarily
skilled artisan were to modify Leleu in view of Bourret’s
teachings, the claimed subject matter would not result. In
this regard, neither of the applied references discloses,
suggests or implies a control lever for controlling a cable
wherein the distance between the cable connector and the lever
axis first decreases and then increases during the stroke of
the lever. It follows that we will not sustain the standing
rejection of claims 2, 3, 5 and 7-14 as being unpatentable
over Leleu in view of Bourret.
In summary, the rejection of claims 2, 3, 5-14 under 35
U.S.C. § 112, second paragraph, (rejection b) is reversed as
to claims 2, 6-8, 12 and 13, but is affirmed as to claims 3,
5, 9-11 and 14. All other rejection are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 96-2094
Application 08/282,783
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JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 96-2094
Application 08/282,783
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