Ex Parte OSE

Board of Patent Appeals and Interferences

Mar 20, 2003

09280180 (B.P.A.I. Mar. 20, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENJI OSE
__________
Appeal No. 2002-1589
Application 09/280,180
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 18, 20, 21 and 23 through 25.
Claims 19 and 22, the only other claims pending in this
application, stand objected to, but have been indicated by the
examiner to be allowable if rewritten in independent form.
Appeal No. 2002-1589
Application 09/280,180
1 Given that the Kund patent issued more than six years
before appellant’s earliest possible filing date, we are at a
loss to understand why this rejection was made by the examiner
under 35 U.S.C. § 102(e) instead of 35 U.S.C. § 102(b).
2
As noted on page 1 of the specification, appellant’s
invention relates to a bicycle control device which includes a
releasable or break-away attachment for a connecting cable. More
particularly, the control device is constructed with a resilient
portion for deflecting so to release the connecting cable
whenever excessive forces are applied to the cable and thereby
avoid damage to the control device. A copy of independent claims
1 and 23 on appeal may be found in the Appendix to appellant’s
brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Kund 5,178,033 Jan. 12, 1993
Chou 5,987,709 Nov. 23, 1999
Claims 1 through 6, 12, 18, 20 and 21 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Kund (Figs. 10-14).1
Appeal No. 2002-1589
Application 09/280,180
2 A rejection of claims 1, 3 through 6, 12, 20 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Allen (U.S.
3,537,328) in view of Uuskallio (U.S. 4,823,752) set forth on
pages 4-6 of the final rejection (Paper No. 9) has now been
withdrawn by the examiner. See pages 3 and 4 of the examiner’s
answer (Paper No. 17).
3
Claims 1, 6 through 17 and 23 through 25 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Kund (Figs.
6-9) in view of Chou.2
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding those rejections, we make reference to the final
rejection (Paper No. 9, mailed December 14, 2000) and examiner's
answer (Paper No. 17, mailed August 29, 2001) for the reasoning
in support of the rejections, and to appellant's brief (Paper No.
15, filed August 3, 2001) and reply brief (Paper No. 19, filed
December 18, 2001) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
Appeal No. 2002-1589
Application 09/280,180
4
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Looking first at the examiner's rejection of claims 1
through 6, 12, 18, 20 and 21 under 35 U.S.C. § 102(e) as being
anticipated by Kund (Figs. 10-14), we note that independent claim
1 on appeal is directed to a gear indicating apparatus (10) “for
coupling to a control cable having a cable end protuberance
attached thereto” comprising: a movable gear indicator (e.g.,
104), a member (e.g., 154) for moving the movable gear indicator
and having a cable terminating structure (e.g., 290), wherein the
cable terminating structure includes a first wall (400) defining
a first detenting structure (420) for receiving the cable end
protuberance, a second wall (404) spaced apart from the first
wall, and wherein at least one of the first wall and second wall
includes “a resilient portion for deflecting in response to a
pulling force applied to the cable terminating structure by the
cable end protuberance so as to release the cable end
protuberance from the first detenting structure” (e.g., Figs. 14-
15).
Appeal No. 2002-1589
Application 09/280,180
5
Like appellant, we note that the embodiment of the gear
display device (80) seen in Figures 10-14 of Kund includes an
actuator rack (89) for moving the movable gear indicator (97) and
that the patentee describes the actuator rack (col. 4, lines 30-
38) as being attached “directly to the shift cable” (11a) via a
clamp (91) and screw (90). There is no disclosure in the Kund
patent with regard to Figures 10-14 of a shift (control) cable
having a cable end protuberance or of any structure of the gear
indicating apparatus therein which is designed to receive and
cooperate with a cable end protuberance. The examiner’s theory
that the clamp (91) of Kund corresponds to appellant’s claimed
cable terminating structure and has a first detenting structure
(labeled in Fig. 14 of Kund by the examiner as FDS) that is
capable of receiving a cable end protuberance, perhaps in the
form of a flat head, is unsupported by any disclosure in the Kund
patent and appears to be based on total speculation.
Similarly, the examiner’s contention that Kund Figures 10-14
discloses a resilient portion (labeled by the examiner as RP in
Fig. 13 of Kund) for deflecting in response to a pulling force
applied to the cable terminating structure by the cable end
protuberance so as to release the cable end protuberance from the
Appeal No. 2002-1589
Application 09/280,180
6
first detenting structure, lacks any factual basis or support in
the applied patent. Moreover, the assertion that the portions
labeled by the examiner as FW and SW in Kund Figure 14 “are
inherently resilient in nature” and “are deflectable upon enough
force actuated by the cable” (answer, page 5) is totally without
support in the Kund reference and entirely speculative on the
examiner's part. In that regard, it is well settled that
inherency may not be established by probabilities or
possibilities, but must instead be "the natural result flowing
from the operation as taught." See In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). In the present case, there
is no basis to believe that the Kund device necessarily would
release a cable end protuberance by resilient deflection as
opposed to simply pulling the entire rack (89) out of the device
or by some other destruction of the device or rack (89). Thus,
neither the Kund patent nor the examiner provides an adequate
factual basis to establish that the natural result flowing from
following the teachings of that patent would be a gear indicating
apparatus like that claimed by appellant.
Appeal No. 2002-1589
Application 09/280,180
7
As for the examiner’s position concerning the “bridging
wall” set forth in claims 3 and 4 on appeal, we agree with
appellant’s argument on page 5 of the brief that no such bridging
wall exists in Kund.
Accordingly, since all the limitations of appellant’s claims
1 through 6, 12, 18, 20 and 21 are not found in Kund, either
expressly or under principles of inherency, it follows that the
examiner's rejection of those claims under 35 U.S.C. § 102(e)
relying on Kund will not be sustained.
Turning next to the examiner's rejection of claims 1, 6
through 17 and 23 through 25 under 35 U.S.C. § 103 as being
unpatentable over Kund (Figs. 6-9) in view of Chou, we note that
the embodiment seen in Figures 6-9 of Kund discloses a gear
indicating apparatus for coupling to a control cable (e.g., slave
cable 31b) having a cable end protuberance or bead (32b) attached
thereto comprising, a movable gear indicator (e.g., 55b) and a
member (37b) for moving the movable gear indicator having a cable
terminating structure associated therewith and a first detenting
structure (38b) for receiving the cable end protuberance. While
the examiner has rejected claims 1, 6 through 17 and 23 through
Appeal No. 2002-1589
Application 09/280,180
8
25 on the basis of Kund and Chou, we note that the only
difference indicated by the examiner is that Kund (Figs. 6-9)
“fails to show the cable terminating structure as set forth in
claims 23-25" (final rejection, page 6). The examiner has made
no attempt to inform us as to the differences between Kund (Figs.
6-9) and the subject matter of appellant’s claims 1 and 6 through
17 on appeal.
To account for the cable terminating structure set forth in
claims 23-25 on appeal and missing from Kund, the examiner turns
to Chou. Chou addresses a re-attachable safety connector (e.g.,
Figs. 13-16) used in conjunction with pull chains like those used
for opening or closing a pair of blinds (col. 3, lines 8-13).
The problem confronted by Chou is the need to decrease the
likelihood of hanging or strangulation which may occur should the
pull chain be within reach of a small child who might
inadvertently become tangled with the pull chain or blind cords
associated therewith. As noted in column 7 of Chou, the re-
attachable safety connector (411) is formed of a molded plastic
such as polypropylene and constructed in such a manner that at
least a portion of the connector adjacent the slots (415) has a
flexibility which will easily release the ball of a pull chain
Appeal No. 2002-1589
Application 09/280,180
9
should excessive tension be exerted on the pull chain, thereby
providing the safety feature that is the key concept in all of
the embodiments of Chou’s pull chain connector.
According to the examiner, it would have been obvious to one
of ordinary skill in the art at the time of appellant’s invention
to modify the cable terminating structure of the gear display
device in Kund (Figs. 6-9) with the re-attachable safety cable
structure of Chou
in order to provide a safety feature in the gear indicating
apparatus wherein the connection between the cable end and
the member is severed when a overpowering force is applied
on the cable coupling member by the cable end, rather than
permanently damaging the internal structure of the gear
indicating apparatus. (final rejection, page 8)
Like appellant (brief, page 9), we find no teaching,
suggestion, or incentive in the applied references which would
have led one of ordinary skill in the art to combine the gear
indicating apparatus of Kund and the blind pull chain safety
connector of Chou in the manner posited by the examiner. Since
we are of the view that the examiner's combination of Kund and
Chou is based on a hindsight reconstruction using appellant’s own
disclosure as a blueprint for combining the clearly disparate
Appeal No. 2002-1589
Application 09/280,180
10
elements of these two patents to arrive at the claimed subject
matter, it follows that we will not sustain the examiner's
rejection of claims 1, 6 through 17 and 23 through 25 under
35 U.S.C. § 103(a) based on Kund and Chou.
In light of the foregoing, the examiner's rejection of
claims 1 through 6, 12, 18, 20 and 21 under 35 U.S.C. § 102(e) as
being anticipated by Kund has been reversed, as has the
examiner's rejection of claims 1, 6 through 17 and 23 through 25
under 35 U.S.C. § 103(a) based on Kund and Chou.
Appeal No. 2002-1589
Application 09/280,180
11
The decision of the examiner is, accordingly, reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2002-1589
Application 09/280,180
12
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