Ex Parte Takachi

Board of Patent Appeals and Interferences

Sep 13, 2006

10117026 (B.P.A.I. Sep. 13, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
Ex p HI
Appeal No. 2006-1452
Application No. 10/117,026
Technology Center 3600

________
Before OWENS, BAHR and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

on appeal under 35 U.S.C. § 134(a) from the examiner's final
rejecti -24 and 51, all of the claims pending in the application. Claims 25-
50 have been canceled.
We reverse.
____________

AND INTERFERENCES
____________

arte TAKESHI TAKAC
____________

____________
ON BRIEF
____

DECISION ON APPEAL
This is a decision
on of claims 1

ycle shift control device. Claims 1 and 51
are representative of the subject matter on appeal, and a copy of these claims can be
found
he examiner relies upon the following as evidence of unpatentability:
The appellant seeks our review of the examiner’s rejection of claims 1-24 and 51
under
plete reasoning in support of the
rejection and to the appellant's brief (filed September 12, 2005) and reply brief (filed
December 21, 2005) for the appellant's
sequence of our review, we make
the de

teaches a bicycle shift control device including all of the elements of the claim. (Final

BACKGROUND
The appellant's invention relates to a bic
in the appendix to the appellant’s brief.

T
Yamane 5,921,139 Jul. 13, 1999

35 U.S.C. § 102(b) as being anticipated by Yamane.

Rather than reiterate in detail the conflicting viewpoints advanced by the examiner
and the appellant regarding this appeal, we make reference to the examiner's answer
(mailed November 10, 2005) for the examiner's com
arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective positions
articulated by the appellant and the examiner. As a con
terminations that follow. It is our view that, after consideration of the record before
us, Yamane does not anticipate the claimed invention.
In the rejection of independent claim 1, the examiner has determined that Yamane

ice
60
the appellant’s
specif
er
ice structured so that
tates, it causes rotation of the transmission control
member for a t (17) to
the left towa
p. 5). The ap

Office Action, p. 3).1 The examiner has also determined that the structure of Yamane’s
device is capable of performing the intended use as recited in the claim. (Final Off
Action, p. 3). Regarding claim 51, the examiner has determined that the gear portion 1
and the second gear portion 171 of Yamane correspond to the structure in
ication for allowing the operating member to rotate the transmission control
member for a selected rotational distance without the second position setting memb
moving toward the disengagement position. (Final Office Action, p. 8).
The appellant contends that Yamane fails to disclose a dev
when operating member (16) ro
selected rotational distance without moving intermediate elemen
rd the disengagement position. (Appellant’s Brief,
pellant explains,
Since drive surfaces (160a) of operating member (16) always
press against driven surfaces (171a) of intermediate element
(17) when operating member (16) rotates in the wire winding
direction shown in Figs. 6(B)-6(D), operating member (16) and
intermediate element (17) always rotate together during that
time. Since takeup member (18) always moves as a unit with
intermediate element (17), and since intermediate element (17)
always rotates together with operating member (16) when
operating member (16) rotates as shown in Figs. 6(B)-6(D), all
three elements (16, 17, 18) rotate together during the
movements shown in Figs. 6(B)-6(D). There is never a time

r in his answer to the Appellant’s Brief merely incorporated by reference the
Appellant’s arguments in the final rejection on March 14, 2005. The Examiner is
t 2005) (“If there is a complete and thorough development of the issues at the
possible to save time in preparing the examiner’s answer required by 37 CFR
ction from a prior Office action and then pasting the copied rejection into the
1 The Examine examiner’s
response to the
admonished not to rely on such incorporation by reference in future answers. See M.P.E.P. § 1207.02
(Rev. 3 Augus time of final
rejection, it is 41.39 by
copying a reje answer. An
examiner’s answer should not refer, either directly or indirectly, to any prior Office action without fully
restating the point relied on in the answer.”) (emphasis added)

right side of Figs.
oves axially to the
left toward the disengagement position. Since cam surfaces
ver
the left

(17)
e
as soon as a user
rotates

operating member (16). There is no space (S) provided in the device of Yamane,
as in the appellant’s invention, that would allow operating member (16) to rotate
during the operation shown in Figs. 6(B)-6(D) that takeup
member (18) rotates without a corresponding rotation of
intermediate element (17). Furthermore, as operating member
(16), intermediate element (17) and takeup member (18) rotate
relative to fixed member (15), cam surfaces (170b) and (151b)
slide relative to each other as shown in the
6(B)-6(D), and intermediate element (17) m
(170b) of intermediate element (17) always press against cam
surfaces (151b) of fixed member (15), there is never a time
during operation shown in Figs. 6(B)-6(D) when operating
member (16) rotates without moving intermediate element (17)
to the left toward the disengagement position. (Appellant’s
Brief, p. 5).
Similarly, with respect to the operation of the device of Yamane in the wire
unwinding direction, as shown in Figs. 7(A)-7(D), the appellant contends, “There is ne
a time during the operation shown in Figs. 7(B)-7(D) (Fig. 7(A) shows the idle state)
when operating member (16) rotates without moving intermediate element (17) to
toward the disengagement position.” (Appellant’s Brief,
p. 5).
We agree with the appellant’s position. The structure of the Yamane device is not
configured to allow rotation of operating member (16) to rotate the transmission control
member (18) for a selected rotational distance without moving intermediate element
toward the disengagement position. The teeth on the second gear portion (171) of the
intermediate element (17) of Yamane are structured so that their surfaces engage with th
surfaces of the teeth on gear portion (160) of operating member (16)

ane. As shown, once the
gears g
f
do not move
over t d by
r (16), the gear portion (160) of operating member
(16) engages second gear portion (171) of intermediate element (17) causing immediate
rotation thereof, which in turn causes on of takeup member (18) by virtue
of its c
find that Yamane fails to disclose a bicycle shift control device “wherein the
first coupling member and the second coupling member are structured so that rotation of
the operating member rotates the transmission control member for a selected rotational
distance without moving the second position setting member toward the disengagement
position,” as recited in claim 1. We also find that Yamane fails to disclose any structure
that would perform the recited function of “allowing the operating member to rotate the
transmission control member for a selected rotational distance without the second
transmission control member (18) for a selected rotation distance without moving
intermediate element (17) towards the disengagement position.
This is evident from Figures 6A-6D and 7A-7D of Yam
move from an idle state (shown in Figures 6A and 7A) to a state in which operatin
member (16) is being rotated, the surface (171a in Figure 6B, 171b in Figure 7B) of
second gear portion (171) engages the surface (160a in Figure 6B, 160b in Figure 7B) o
gear portion (160) and second gear portion (171) immediately starts to move to the left
toward the disengagement position (shown in Figures 6B and 7B).
The device of Yamane is also structured so that “intermediate element 17 is in
constant engagement with the takeup member 18.” (Yamane, col. 6, lines 18-20).
Further, the tooth measurement (171h) of the second gear portion (171) is sized so that
“the gear teeth of the second gear portion 171 of the intermediate element
he teeth of the gear portion 160 of the operating element 16 and remain capture
the same mating teeth. …” (Yamane, col. 6, lines 33-36) (emphasis added). As such,
when the user rotates operating membe
immediate rotati
onstant engagement with intermediate element (17).
We

osition setting member moving toward the disengagement position,” as recited in claim
1. Accordingly, we reverse the examiner’s rejection of claims 1 and 51.
With regard
rejections rely upo depende claim 1, we also reverse the
examiner’s rejection of these claims.

To summariz r to reje 1 is
reversed.

)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
p
5
to remaining rejected dependent claims 2-24, because these claim
n the underlying rejection of in nt
CONCLUSION
e, the decision of the examine ct claims 1-24 and 5
REVERSED

ELAND LAW OFFICE
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LAMATH RIVER, CA 96050-0069

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