Ex Parte Takahama et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201711950002 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 11/950,002 12/04/2007 Kimitaka TAKAHAMA SN-US075297 5775 22919 7590 03/01/2017 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 EXAMINER LUONG, VINH ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): mailpto @ giplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIMITAKA TAKAHAMA, NOBUYUKI ICAR I NO Id, AKIRA INOUE, and SHINPEI O KAJIMA Appeal 2014-009528 Application 11/950,0021 Technology Center 3600 Before JENNIFER D. BAHR, LYNNE H. BROWNE, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a rejection of claims 1, 3-10, and 12-15. 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 February 23,2017. We reverse. 1 Appellants identify Shimano, Inc., as the real party in interest. App. Br. 4. Appeal 2014-009528 Application 11/950,002 BACKGROUND The claims are directed to a bicycle pedal. Claim 1, reproduced below, is illustrative: 1. A bicycle pedal comprising: a pedal shaft; a pedal body having a first end and a second end, with the pedal shaft being rotatably coupled to the pedal body; a front cleat retainer disposed on the first end of the pedal body, the front cleat retainer having a downwardly facing first cleat retaining surface and a forward cleat stopping point facing towards the second end of the pedal body; a rear cleat retainer having a mounting flange apd a rear clamping portion, the mounting flange being pivotally coupled to the second end of the pedal body by a pivot pin for pivotal movement about a rear pivot axis defined by the pivot pin, the pivot pin extending through the mounting flange and through the second end of the pedal body, the rear clamping portion having a downwardly facing second cleat retaining surface and a rear cleat step- in point facing away from the pedal body, the mounting flange and the rear clamping portion being free of any pivot points therebetween; and a rear biasing element operatively disposed between the pedal body and the rear cleat retainer to bias the rear clamping portion to a first position, the forward cleat stopping point, the rear pivot axis and the rear cleat step-in point are arranged to define a triangle with a first side of the triangle interconnecting the forward cleat stopping point and the rear cleat step-in point, a second side of the triangle interconnecting the rear cleat step-in point and the rear pivot axis, and a third side of the triangle interconnecting the forward cleat stopping point and the rear pivot axis, with the triangle having an interior angle between the first and second 2 Appeal 2014-009528 Application 11/950,002 sides of the triangle with the rear clamping portion in the first position, the interior angle being within the range of 52 degrees and 72 degrees. App. Br. 22 (Claims App.). REJECTIONS Appellants seek review of the following rejections: 1. Claims 1, 3-10, and 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Muraoka (U.S. Pat. No. 6, 722,229, iss. Apr. 20, 2004). Final Act. 2-6. 2. Claims 1, 3-10, and 12-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Muraoka and Plassiard (U.S. Pat. Pub. No. 2004/0089098 Al, pub. May 13, 2004). Final Act. 6-10. DISCUSSION Muraoka The Examiner find that Muraoka “teaches the invention substantially as claimed” but “does not explicitly teach the interior angle range of 52°- 72°, 52°-70°, 52°-68°, 52°-66°, or 52°-64°.” Final Act. 4. Thus, to reject the claims as obvious, the Examiner must show that a skilled practitioner had some reason to modify the structure of Muraoka such that it satisfied the claimed angle ranges. The Examiner concludes that a person of ordinary skill in the art would have found it obvious to use those angle ranges for several reasons. First, the Examiner concludes that “[i]t is common sense and/or common knowledge to try” the ranges to “provide a step-in bicycle assembly that is relatively simple and inexpensive to manufacture.” Final Act. 4 3 Appeal 2014-009528 Application 11/950,002 (citing Muraoka, Summary of the Invention). As Appellants point out (App. Br. 10-11), that statement provides no support for modifying Muraoka. Rather, to the extent this stated objective of Muraoka’s invention relates to a modification, it indicates that Muraoka’s design is already simple and inexpensive and thus not ripe for improvement. The Examiner has not explained with any specificity how the proposed modification would benefit Muraoka’s goal of an assembly that is “relatively simple and inexpensive to manufacture.” Second, the Examiner concludes that using the claimed angle ranges “would have been a matter of choice in design since the claimed structures and the function they perform are the same as the prior art.” Final Act. 4. But the case law the Examiner cites makes clear that if the applicant demonstrates that the claimed design has functional differences from the prior art, a rejection cannot be based on “obvious design choice” without a showing that the claimed elements were known in the art. In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995). Here, the Declaration of Akira Inoue under 37 C.F.R. § 1.132 demonstrates that the claimed angle ranges provide reduced step-in force without reduced clamping force. Declaration of Akira Inoue 8-10. Thus, the Examiner may not rely on “obvious design choice” to establish that the claimed angle ranges would have been obvious to persons skilled in the art. Third, the Examiner concludes that choosing the claimed angle ranges “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.’” Final Act. 4 (quoting KSR Int’l. 4 Appeal 2014-009528 Application 11/950,002 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). But the Examiner has not identified a teaching of the claimed ranges in the prior art, so does not have findings sufficient to support a simple-substitution rationale under KSR. Finally, the Examiner relies on sections of the MPEP regarding rearrangement of parts (§ 2144.04) or obviousness of ranges (§ 2144.05). Final Act. 5. The Examiner has not provided sufficient explanation to elucidate the basis for this reasoning. Moreover, as discussed supra, Appellants have demonstrated that the claimed angle ranges provided specific benefits to the design. See Declaration of Akira Inoue 8-10. Without a teaching of the claimed angle ranges in the art, the Examiner’s rejection lacks adequate factual basis. Because the Examiner does not provide a sufficient rationale for modifying Muraoka, we do not sustain the rejection based on Muraoka alone. Plassiard The Examiner finds that Plassiard teaches the claimed angle range, pointing to an arrangement of parts in Plassiard’s Figure 2. Final Act. 7. The Examiner provides an appendix identifying the angle in Plassiard that the Examiner relies on. See Office Action App’x, 2. The Examiner’s annotated Figure 2 is reproduced below: 5 Appeal 2014-009528 Application 11/950,002 The Examiner’s annotated Figure 2 depicts Plassiard’s Figure 2 with additional annotations such that an angle labeled “A” corresponds to the Examiner’s mapping of the claimed “interior angle between the first and second sides of the triangle.” See id. Appellants argue that the Examiner points to parts of Plassiard that do not correspond to the claimed elements, and thus that the angle identified by the Examiner cannot teach the claimed angle. See App. Br. 16-18. We agree. The Examiner relies on an angle in Plassiard with a vertex at Plassiard’s “bearing region 15.” Examiner’s Appendix, 2; see Plassiard ^ 54, Fig. 2. Because the bearing region 15 is not a “rear cleat step-in point” that is part of a “rear clamping portion” as claimed, the Examiner has not identified a teaching of the claimed structure in the prior art. In Plassiard, if the appropriate point of the clamping portion forms a vertex of a triangle with the forward cleat stopping point and rear pivot axis, the angle of that vertex is not within the claimed range, as Appellants illustrate. App. Br. 15. 6 Appeal 2014-009528 Application 11/950,002 Accordingly, we do not sustain the rejection based on Muraoka and Plassiard. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3-10, and 12-15 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation