Ex Parte Watarai

Board of Patent Appeals and Interferences

Mar 9, 2010

10995237 (B.P.A.I. Mar. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ETSUYOSHI WATARAI
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Appeal 2009-005239
Application 10/995,237
Technology Center 3600
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Decided: March 10, 2010
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as 3
being unpatentable over Vlakancic (US 5,545,982, issued Aug. 13, 1996) 4
and Campagnolo (US 6,490,507 B1, issued Dec. 3, 2002); and finally5
Appeal 2009-005239
Application 10/995,237

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rejecting claim 4 under § 103(a) as being unpatentable over Vlakancic, 1
Campagnolo and either Ueno (US 6,523,772 B2, issued Feb. 25, 2003) or 2
Watarai (US 6,192,300 B1, issued Feb. 20, 2001). The Examiner has 3
withdrawn claims 9-25 from consideration. We have jurisdiction under 35 4
U.S.C. § 6(b). 5
We REVERSE. 6
Claim 1, the sole independent claim on appeal, recites: 7
1. A bicycle sensor unit comprising: 8
a bicycle brake part; and 9
a sensor fixedly attached to the bicycle 10
brake part to detect rotational behavior of a bicycle 11
wheel at a location radially outwardly of a brake 12
pad relative to a center axis of the bicycle wheel 13
when the bicycle brake part is coupled to a bicycle 14
frame, 15
the bicycle brake part being one of a bicycle 16
brake attachment member configured to be non-17
movably coupled to the bicycle frame and a 18
bicycle brake arm configured to support the 19
bicycle brake pad for movement against a rim of 20
the bicycle wheel. 21
Vlakancic discloses a bicycle including a rear wheel 108 (fig. 3) and a 22
rear brake assembly 110 (fig. 3), 126 (fig. 4). The rear wheel 108 (fig. 3) has 23
a wheel rim 144 (fig. 5). The rim 144 (fig. 5) mounts a magnet 148 (fig. 5). 24
The rear brake assembly 110 (fig. 3), 126 (fig. 4) includes a pair of opposed 25
calipers mounting brake pads 112 (fig. 3), 128, 130 (fig. 4), 150 (fig. 5). A 26
sensor 152 (fig. 5) recessed into the brake pad 110 (fig. 3), 130 (fig. 4), 150 27
(fig. 5) generates a signal each time magnet 148 (fig. 5) passes the brake pad 28
112 (fig. 3), 130 (fig. 4), 150 (fig. 5). A signal conductor 120 (fig. 3), 142 29
(fig. 4), 154 (fig. 5) extends from the sensor 152 (fig. 5) recessed in the 30
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Application 10/995,237

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brake pad 112 (fig. 3), 130 (fig. 4), 150 (fig. 5) to a cycle computer 18 (fig. 1
1A) so as to count the revolutions of the rear wheel 108 (fig. 3). (Vlakancic, 2
col. 2, ll. 47-53; col. 4, ll. 4-7, 10-12, 13-15, 18-25 and 27-35; and figs. 1A 3
and 3-5). 4
Campagnolo discloses a racing bicycle 10 including a first sensor 30 5
for detecting the speed of rotation of either the front or rear wheel and a 6
second sensor 32 for detecting the speed of rotation of the pedal cranks 18. 7
The first sensor 30 corresponds to a first magnet 34 and the second sensor 32 8
corresponds to a second magnet 36. (Campagnolo, col. 2, ll. 8-17). Figure 1 9
of Campagnolo depicts the first sensor 30 as being mounted on the front fork 10
of the bicycle radially inwardly of the brake pads. Figure 1 also depicts the 11
magnet 34 as being mounted on a spoke of the front wheel radially inwardly 12
of the brake pads. Figure 1 does not depict either the second sensor 32 or 13
the second magnet 36 as being mounted on a brake part. 14
Neither Vlakancic nor Campagnolo discloses a limitation of claim 1, 15
namely, “a sensor fixedly attached to a bicycle brake part to detect rotational 16
behavior of a bicycle wheel at a location radially outwardly of a brake pad 17
relative to a center axis of the bicycle wheel when the bicycle brake part is 18
coupled to a bicycle frame.” Nevertheless, the Examiner finds that “it is 19
known that the wheel speed sensor arrangements used on bicycles may be 20
located on different areas of the bicycle, but the choices are limited because 21
the sensor and magnet have to be located in close proximity to one another 22
to provide accurate riding information to the computer.” (Ans. 3). The 23
Examiner concludes that it would have been obvious to have located a 24
sensor arrangement of the type disclosed by Vlakancic radially outwardly of 25
the brake pads “simply as [an] obvious alternative rearrangement of known 26
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Application 10/995,237

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parts with only a finite number of predictable solutions.” (Ans. 3-4). The 1
Appellant disagrees. (See App. Br. 14-16). 2
The Supreme Court has explained that: 3
When there is a design need or market pressure to 4
solve a problem and there are a finite number of 5
identified, predictable solutions, a person of 6
ordinary skill has good reason to pursue the known 7
options within his or her technical grasp. If this 8
leads to the anticipated success, it is likely the 9
product not of innovation but of ordinary skill and 10
common sense. In that instance the fact that a 11
combination was obvious to try might show that it 12
was obvious under § 103. 13
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). The Examiner has 14
not shown that this rationale applies to the rejection of claims 1-3 and 5-8. 15
In particular, the Examiner has not articulated any problem known to one of 16
ordinary skill in the art prior to the disclosure of the Appellant’s 17
Specification for which locating a sensor attached to a brake part radially 18
outside of the brake pads was an identified, predictable solution. Absent the 19
articulation of such a problem, one of ordinary skill in the art would have 20
had no apparent reason even to try locating the sensor where claim 1 recites. 21
The Examiner’s evidence and reasoning fails to support the 22
conclusion that subject matter of claims 1-3 and 5-8 would have been 23
obvious from the combined teachings of Vlakancic and Campagnolo. We 24
do not sustain the rejections of claims 1-3 and 5-8 under § 103(a) as being 25
unpatentable over Valakancic and Campagnolo.1 26

1 Although the Examiner mentions Lohberg (US 6,293,140 B1, issued
Sep. 25, 2001) in the Answer, the Examiner has not “applied” Lohberg in
any rejection. We have not considered Lohberg in this appeal.
Appeal 2009-005239
Application 10/995,237

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Ueno and Watarai disclose bicycles including magnets mounted to 1
spokes of the front wheels and corresponding sensors mounted to the front 2
forks. (Ueno, fig. 1; see also id., col. 3, ll. 16-26; Watarai, col. 5, ll. 19-23 3
and fig. 5). Neither Ueno nor Watarai discloses a sensor fixedly attached to 4
a bicycle brake part to detect rotational behavior of a bicycle wheel at a 5
location radially outwardly of a brake pad relative to a center axis of the 6
bicycle wheel when the bicycle brake part is coupled to a bicycle frame. 7
Neither remedies the deficiencies of the combined teachings of Vlakancic 8
and Campagnolo. The Examiner’s evidence and reasoning fails to support 9
the conclusion that subject matter of claim 4 would have been obvious from 10
the combined teachings of Vlakancic, Campagnolo and either Ueno or 11
Watarai. We do not sustain the rejection of claim 4 under § 103(a) as being 12
unpatentable over Valakancic, Campagnolo and either Ueno or Watarai. 13
14
DECISION 15
We REVERSE the Examiner’s decision rejecting claims 1-8. 16
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REVERSED 18
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mls 22
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