Ex Parte Talavasek

Patent Trial and Appeal Board

Sep 26, 2016

13422768 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/422,768 03/16/2012
132800 7590 09/28/2016
Michael Best & Friedrich LLP (Specialized)
100 East Wisconsin A venue
Suite 3300
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Jan Talavasek
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
087271-9136-00 8171
EXAMINER
ARCE, MARLON ALEXANDER
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN TALA VASEK
Appeal2014-008735
Application 13/422,768
Technology Center 3600
Before JENNIFER D. BAHR, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jan Talavasek ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-21. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant submits the real party in interest is Specialized Bicycle
Components, Inc. Appeal Br. 2.
Appeal2014-008735
Application 13/422,768
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A bicycle comprising:
a frame;
front and rear wheels supporting the frame; and
a brake lever assembly including:
a brake lever having a pivot portion, a gripping
portion defining a gripping length, and a free end defining
an end width, wherein the brake lever defines a lever
length from a center of the pivot portion to the free end;
and
an end cap detachably secured to the free end,
wherein the end cap defines a cap width larger than the end
width, and wherein the end cap defines a maximum
dimension that is less than the gripping length.
REJECTIONS
1) Claims 1-7, 9-15, and 17-21 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Heilbron (US 5,299,466, iss. Apr. 5,
1994).
2) Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Heilbron.
DISCUSSION
Rejection 1: Claims 1-7, 9-15, and 17-21: Anticipation by Heilbron
Claims 1-7, 9-15, and 17-20:
The Examiner finds that Heilbron discloses all the limitations of these
claims. Final Act. 3--4. The Examiner admits that Heilbron does not
disclose specific dimensions but finds that when "a person with wider hands
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Application 13/422,768
{{perhaps a tall or overweight person}} is utilizing the [Heilbron] bicycle,
the gripping length for that person would almost be the entire lever length."
Id. at 2. The Examiner then finds that a gripping length, defined by the size
of the user's hand, would exceed the maximum dimension of Heilbron' s end
cap. Id.
Appellant's primary contention of error with respect to independent
claims 1, 9, and 17 is that the "Examiner's contention ... that a user's hand
defines the gripping length is wholly inconsistent with Applicant's
disclosure and claimed invention." Appeal Br. 7-9. For the following
reasons, we do not sustain the rejection of claims 1, 9, and 17.
Heilbron discloses "brake lever 20" having "a central portion 26
which is indented toward grip 16 so as to enhance the grip which is offered
thereby." Heilbron, Col. 3, 11. 15, 20-21, Fig. 2. The Examiner finds that
Heilbron's central portion 26 is the recited gripping portion. Final Act. 3.
The Examiner also finds that the maximum dimension of Heilbron's end cap
is the length of lever member 44. Ans. 5 (referring to Heilbron, Fig. 2).
Claim 1 recites "a gripping portion defining a gripping length" while
claims 9 and 17 recite "a gripping portion having a gripping length." Appeal
Br. 12-14 (Claims App.). The length of Heilbron's indented central portion
26, not the size of a user's hand, defines the gripping length. See Spec. 4.
("The gripping portion 30 has a gripping length L2 of 47mm and has a grip
width WI of 24mm. "). The Examiner's finding that the maximum
dimension of Heilbrun's end cap (lever member 44) is less than the gripping
length is not supported by a preponderance of the evidence because Heilbron
does not disclose any specific dimensions for the length of central portion 26
or the length of lever member 44. In addition, the relative dimensions of
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Application 13/422,768
central portion 26 and lever member 44 cannot be definitively determined
from Heilbron's Figure 2. We, thus, do not sustain the rejection of claims 1,
9, and 17. We also do not sustain the rejection of claims 2-7 which are
dependent on claim 1, claims 10-15 which are dependent on claim 9, and
claims 18-20 which are dependent on claim 17.
Claim 21:
Claim 21 recites "an end cap ... having a cap width with a minimum
dimension that is larger than the end width" of the brake lever. Appeal Br.
14 (Claims App.). In rejecting claim 21, the Examiner relies on an
annotated version ofHeilbron's Figure 8. Final Act. 2--4. The Examiner
finds that the diameter of Heilbron's central barrel portion 46 is the
minimum dimension of the end cap. Id. The Examiner finds that the width
of end 28 of Heilbron's brake lever is smaller than the width of Heilbron's
central barrel portion 46. Id. Appellant submits an annotated version of
Heilbron's Figure 4, and contends that Heilbron discloses "at least two
dimensions ... that are at least no larger in width than any end width of the
brake lever." Appeal Br. 11. Appellant also contends that Heilbrun "is
completely silent regarding dimensions associated with the brake lever and
the extension unit" and "nothing in Heilbron provides any factual support for
a minimum dimension of the extension unit's width being larger than the
end width of the lever." Id. For the following reasons we do not sustain the
rejection of claim 21.
The basis for the Examiner's rejection of claim 21 is a visual
comparison of the width of end 28 of Heilbron's brake lever to the width of
central barrel portion 46 as depicted in Heilbron's Figure 8. We first note
that nut 60 on the end of central barrel portion 46 in Figure 8 appears to have
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Application 13/422,768
a smaller diameter than central barrel portion 46. However, in the absence
of any specific dimensions for the width of end 28, central barrel portion 46,
or nut 60, the Examiner's finding that Heilbron discloses an end cap with a
minimum dimension less than the width of the brake lever is not supported
by a preponderance of the evidence. See Hockerson-Halberstadt, Inc. v.
Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000) ("[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue."). We, thus, do not sustain
the rejection of claim 21.
Rejection 2: Claims 8 and 16: Obviousness in light of Heilbron
The Examiner rejected claims 8 and 16 as unpatentable over Heilbron.
Final Act. 5. Claim 8 is dependent on claim 1 and claim 16 is dependent on
claim 9. We, thus, do not sustain the rejection of claims 8 and 16 for the
same reasons stated above for claims 1 and 9.
DECISION
The Examiner's decision rejecting claims 1-21 is reversed.
REVERSED
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