Ex Parte Takizawa et al

Patent Trial and Appeal Board

Aug 11, 2017

13758830 (P.T.A.B. Aug. 11, 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.
13/758,830 02/04/2013 Shinichi TAKIZAWA 57139-5114 5055
24574 7590 08/15/2017
JEFFER, MANGELS, BUTLER & MITCHELL, LLP
1900 AVENUE OF THE STARS, 7TH FLOOR
LOS ANGELES, CA 90067
EXAMINER
HSIAO, JAMES K
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI TAKIZAWA, OSAMU KARIYAMA,
KENICHI KIKUNO, and SHIMANO INC.
Appeal 2016-003365
Application 13/758,8301
Technology Center 3600
Before BRUCE R. WINSOR, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—7 and 9—13. Claim 8 has been
allowed. Final Act. 5. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Shimano Inc. App.
Br. 1.
Appeal 2016-003365
Application 13/758,830
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to “hydraulic disc brakes, and
more particularly, to a hydraulic disc brake caliper with one way plumbing.”
Spec. 12. Claims 1 and 3, which are illustrative of the claimed invention,
read as follows (paragraphing added):
1. A hydraulic disc brake caliper housing for a bicycle
having a frame comprising:
first and second side portions and first and second end
portions that cooperate to define a fluid path defined therein that
extends between a fluid inlet and a fluid outlet,
wherein the fluid inlet is separate from the fluid outlet,
wherein the first side portion has at least a first piston
receiving opening defined therein and the second side portion has
at least a second piston receiving opening defined therein that
opposes the first piston receiving opening,
wherein the fluid path is defined such that when fluid
enters the fluid inlet, the fluid flows through the first side portion,
then through the first piston receiving opening, then through the
first end portion, then through the second side portion, then
through the second piston receiving opening and then to the fluid
outlet,
wherein the housing defines an outside boundary,
wherein the entire fluid path is defined within the housing
and does not extend outside of the outside boundary, and, within
the housing, fluid can not flow outside the fluid path.
3. A hydraulic disc brake caliper housing for a bicycle
having a frame comprising:
first and second side portions and first and second end
portions that cooperate to define a fluid path defined therein that
extends between a fluid inlet and a fluid outlet,
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Application 13/758,830
wherein the first side portion has at least a first piston
receiving opening defined therein and the second side portion has
at least a second piston receiving opening defined therein that
opposes the first piston receiving opening,
wherein the fluid path is defined such that when fluid
enters the fluid inlet, the fluid flows through the first side portion,
then through the first piston receiving opening, then through the
first end portion, then through the second side portion, then
through the second piston receiving opening and then to the fluid
outlet,
wherein the housing defines an outside boundary,
wherein the entire fluid path is defined within the housing
and does not extend outside of the outside boundary, and, within
the housing, fluid can not flow outside the fluid path,
wherein the fluid inlet is located on the second side portion
and the fluid outlet is located in the first side portion.
References
The Examiner relies on the following prior art in rejecting the claims:
Botterill US 3,420,342 Mar. 10, 1967
Russell US 6,386,333 B1 May 14, 2002
Rejection
Claims 1—7 and 9-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Botterill and Russell. Final Act. 2—5.
Issue on Appeal
Is the combination of Botterill and Russell proper?
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Application 13/758,830
ANALYSIS
Combination of Botterill and Russell
Analogous Art
In an obviousness analysis,
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (emphasis added). Determining whether
art is in the same field of endeavor as Appellants’ claimed invention
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” Bigio, 381 F.3d at 1325.
Appellants contend Botterill and Russell are not properly combinable
because they non-analogous art. App. Br. 13. Appellants contend:
Botterill and Russell are not in the same field as the claimed
invention, which the Applicant expressly stated in each
independent claim is “a hydraulic disc brake caliper housing for
a bicycle.” (Emphasis added). Instead, Botterill and Russell are
directed to the field of automotive vehicles (See the Abstract of
Botterill) and high speed racing cars (See Column 1, lines 3 8-42
of Russell).
App. Br. 14.
We find Appellants’ field of endeavor is hydraulic disc brakes. See
Spec. 12. We agree with the Examiner that Botterill and Russell “both
disclose disk brakes wherein hydraulic calipers brake a disk through
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Application 13/758,830
hydraulic actuation and circulation [of a fluid] in the brake system” and,
therefore, are in the same field of endeavor as Appellants’ invention. Ans. 6.
We are not persuaded that a skilled artisan working in the field of hydraulic
disc brakes regarding one type of vehicle, e.g., Appellants’ bicycle, would
not be aware of techniques used for hydraulic brakes regarding other forms
of vehicles, e.g., Botterill’s and Russell’s automotive vehicle.
Therefore, we find that Appellants’ invention, Botterill, and Russell
are all in the same field of endeavor and are, therefore, analogous art. See
Klein, 647 F.3d at 1348. In view of this finding, we need not address the
second, separate, test for analogous art. Id.
Motivation to Combine
Appellants contend one of ordinary skill in the art would not be
motivated to combine the teachings of Botterill and Russell because
modifying Russell to include an inlet that is separate from an outlet, as
taught by Russell, would render Botterill unsatisfactory for its intended
purpose. App. Br. 19. According to Appellants, “the entire purpose of the
Botterill invention is to provide circulation of the brake fluid within the
caliper to allow the brake fluid to cool” and Botterill teaches “[t]he
circulation is provided by ‘two channels [that] extend from cylinder 4 to
cylinder 5 to form conduits for the circulation of brake fluid therebetween,
i.e., a lower conduit with the descending branch 6a and ascending branch 6b
. . . and an upper conduit with ascending branch 7b and descending branch
7a.’” App. Br. 19-20 (citing Botterill, Fig. 2; 2:4—18, 3:1—6). Appellants
argue “[i]n order to provide this circulation, the inlet and outlet have to be
the same conduit 16/27 or at least on the same side of the caliper” and “if
Botterill were combined with Russell and the outlet was placed on the side
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Application 13/758,830
of Botterill opposite the inlet, the circulation advantages of Botterill. . .
would be lost and the brake fluid would not be cooled” which would render
Botterill unfit for its intended purpose of providing circulation of the brake
fluid within the caliper to allow the brake fluid to cool. App. Br. 21.
Independent Claim 3
We find Appellants’ contention persuasive with respect to
independent claim 3. Claim 3 recites “wherein the fluid inlet is located on
the second side portion and the fluid outlet is located in the first side
portion.” Claim 3, therefore, requires the fluid inlet and the fluid outlet to be
on opposite sides of the caliper housing.
Botterill teaches
In operation, especially upon prolonged or repetitive braking, the
brake linings and their pistons undergo considerable heating; the
resultant rise in the temperature of the cylinders tends to vaporize
some of the brake fluid, particularly in the wheel-side cylinder
remote from the inlet where heat is not dissipated into the
surrounding structure as effectively as on the supported side.
Botterill 1:56—62. Botterill teaches an object of the invention is “to intensify
the cooling of over-heated brake fluid, particularly in the cylinder and
conduit sections remote from the inlet.” Id. at 1:71—2:3. To achieve this
object, Botterill teaches an arrangement that “insures a circulation of the
working liquid in one sense only, whereby cooling takes place more rapidly
and any residual gas occlusions are propelled toward the cooler inlet region
where they will either re-condense or move toward the reservoir.” Id. at
2:12—16. We agree with Appellants that modifying the caliper of Botterill
with the teachings of Russell to include an outlet positioned on the side
opposite of, and separate from, the inlet, as required by claim 3, would
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Application 13/758,830
prohibit residual gas occlusions from being propelled toward the cooler inlet
region thereby rendering Botterill unsatisfactory for its intended purpose.
As such, we do not sustain the Examiner’s rejection of claim 3.
Independent Claims 1, 6, and 9
As implicitly acknowledged by Appellants (App. Br. 12), claims 1, 6,
and 9 do not require the fluid inlet and the fluid outlet to be located on
different side portions of the caliper housing but, instead, merely require the
fluid inlet to be separate from the fluid outlet. As also acknowledged by
Appellants, for the system of Botterill to provide the necessary circulation
“the inlet and outlet have to be on the same conduit 16/27 or at least on the
same side of the caliper. ” App. Br. 21 (emphasis added). As such, with
respect to claims 1, 6, and 9 we are not persuaded that modifying Botterill to
include a fluid outlet separate from the fluid inlet would render Botterill
unsatisfactory for its intended purpose or change the principle of operation
of Botterill because the fluid outlet could be placed in close proximity to the
fluid inlet thereby allowing for Botterill’s objective of circulating the fluid
through the caliper.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 6, and 9; and dependent claims 2—5, 7, and 10-13, which are not
separately argued.
DECISION
We affirm the Examiner’s rejection of claims 1,2, 4—7, and 9—13.
We reverse the Examiner’s rejection of claim 3.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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