Ex Parte Watarai et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201711970586 (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. 11/970,586 01/08/2008 Etsuyoshi Watarai SN-US075308 3379 22919 7590 03/01/2017 GLOBAL IP COUNSELORS, LLP David Tarnoff 1233 20TH STREET, NW Suite 600 WASHINGTON, DC 20036-2680 EXAMINER YABUT, DANIEL D 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 ETSUYOSHI WATARAI and SATOSHI SHAHANA Appeal 2014-009370 Application 11/970,5861 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—14. 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 affirm. 1 Appellants identify Shimano as the real party in interest. Appeal Br. 3. Appeal 2014-009370 Application 11/970,586 BACKGROUND The claims are directed to a bicycle shift operating device. Claim 1, reproduced below, is illustrative: 1. A bicycle shift operating device comprising: a base member; a handlebar mounting member fixed to the base member; a shift wire take-up element rotatably mounted with respect to the base member in first and second rotational directions about a pivot axis; and a shifting unit operatively coupled to the shift wire take-up element, the shifting unit including a support member and a shift operating member movably mounted with respect to the base member to move from a rest position to a first operated position along a first plane to operate the shift wire take-up element in the first rotational direction, and the shift operating member being pivotally mounted to the support member to move relative to the support member along a second plane from the rest position to a second operated position to operate the shift wire take-up element in the second rotational direction, the first and second planes intersecting by an angle between twenty degrees and seventy degrees, the base member having a part being arranged to prevent the shift operating member from moving along the second plane to the second operated position while the shift operating member is in the first operated position. App. Br. 21 (Claims App.). 2 Appeal 2014-009370 Application 11/970,586 REJECTIONS Appellants seek review of the following rejections: 1. Claims 1—14 stand rejected under 35 U.S.C. § 112 as failing to comply with the written-description requirement. Final Act. 3—4, 12-13. 2. Claims 1—14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nagano (U.S. Pat. No. 4,864,885, iss. Sep. 12, 1989). Final Act. 5-12, 13-14. DISCUSSION Written description The Examiner finds that the specification does not support the claim limitation “the base member having a part being arranged to prevent the shift operating member from moving along the second plane to the second operated position while the shift operating member is in the first operating position.” Final Act. 3. That limitation appears in all independent claims. App. Br. 21—26 (Claims App.). Appellants contend that Figures 10 and 13 support the limitation, by showing that a portion of the base member prevents the shift operating member from moving to the second operated position when it is in the first operating position. App. Br. 13—15. Appellants do not contend that any other portion of the specification supports the limitation. We agree with the Examiner. Figure 10 is reproduced below: 3 Appeal 2014-009370 Application 11/970,586 Figure 10 shows a side view of the shift operating device in the rest position. Spec. 11, 19. Appellants contend that: [I]n the partially reproduced Figure 10, the comer portion of the base member indicated below is arranged above the lever member 70 such that the lever member 70 cannot be moved “upward” (out of the page) all the way to the second operated position because the part of the base member 40 prevents this. App. Br. 13. However, as Figure 10 depicts the operating device in the rest position, the lever member 70 must be able to move all the way to the second operated position; otherwise, the device would not function as described. Accepting Appellants’ assertion that the comer portion of the base member in Figure 10 limits motion of lever member 70, Figure 10 accordingly shows the maximum extent to which lever member 70 must move to reach the second operated position. 4 Appeal 2014-009370 Application 11/970,586 With that understanding from Figure 10, we do not agree with Appellants that Figure 13 shows that the base member prevents movement of lever member 70 when the mechanism is in the first operated position. Figure 13 is reproduced below: Figure 13 depicts a top cross-sectional view of the shift operating device with the shift operating member rotated in the first rotational direction to perform a shifting operation. Spec. 122. Appellants argue that in Figure 13, “center line of pin 71 passes under the base member 40.” Reply Br. 5—6. But this issue does not turn on whether some portion of the center line of pin 71 passes under the base member; it turns on whether base member 40 would prevent lever member 70 from rotating about pin 71 sufficiently to reach the second operated position. While Figure 13 depicts the center line of pin 71 passing under the base member, it only does so beyond the point at which operating member 70 is located. Thus, Figure 13 does not depict interference between base member 40 and operating member 70. Certainly, at some point in the 5 Appeal 2014-009370 Application 11/970,586 rotation of operating member 70 about pin 71, base member 40 would interfere with further motion.2 But in light of Figure 10, we agree with the Examiner and find that Figure 13 does not show that operating member 70 would be prevented from reaching a second operated position. See Ans. 3— 4. Accordingly, we sustain the rejection of claims 1—14 as lacking adequate support in the written description. Obviousness Appellants argue independent claims 1, 10, and 11 in separate sections but, for each, rely only on the arguments made for claim 1. App. Br. 15—20. Appellants further rely on those arguments for dependent claims 2—9 and 12—14. Id. at 20. Thus, we consider Appellants’ arguments for claim 1, and the other claims stand or fall with claim 1. The Examiner finds that Nagano substantially teaches the limitations of claim 1, including that it teaches “the base member having a part being arranged to prevent the shift operating member from moving along the second plane to the second operated position while the shift operating member is in the first operating position.” See Final Act. 6; App. Br. 21 (Claims App.). For that limitation, the Examiner relies on “cutout 12a” in “[r]ising wall 12” as depicted in Nagano’s Figure 2. Final Act. 6. According to the Examiner, “this cutout is visible in Fig. 2 as a lateral notch 2 To the extent the Specification describes the amount of movement required to reach the second position, it depicts that movement in Figure 17. See Spec. Fig. 17,H26, 37, 56, 57; Ans. 3^4. We agree with the Examiner that the Specification does not disclose a structure to prevent the amount of movement in the second direction shown in Figure 17 when the lever is in the first operated position. Ans. 3^4. 6 Appeal 2014-009370 Application 11/970,586 accommodating portion 3 a whereby full shifting of lever 3 upon the second plan is prevented.” Id. The Examiner further finds that “it is clear from Figure 2 that when the lever 3 is pivoted into the page toward the claimed ‘first operated position,’ it is inherently prohibited from pivoting counterclockwise about pivot 37 toward the claimed ‘second operated position’ by the boundaries of cutout 12a.” Id. at 14. Appellants first argue that Nagano’s Figure 3 depicts lever 3 in the first operated position and does not depict any structure that would prevent lever 3 from moving along plane P2 to the second operated position. App. Br. 17. As Appellants summarize: “[t]here is no evidence that the cutout 12a is different in each of these positions,” referring to the first and second operated positions. Id. at 18. We agree with Appellants that Figure 3 does not depict a structure satisfying the claimed restriction. In the Answer, the Examiner points to a portion of Figure 2 that lacks cross-hatching and asserts that “the cutout 12a is reduced in height as indicated by the stepped edge.” Ans. 5. Appellants respond that Nagano’s Figure 2 does not provide evidence “that the area ‘E’ would interfere with the operation of the lever 3.” Reply Br. 7. Appellants reason that Nagano “is simply silent with regard to this area” and that no evidence shows the area “would necessarily prevent movement of lever 3.” Id. We agree— Figure 2 is not sufficiently clear to support the Examiner’s factual finding. Thus, we agree with Appellants that the Examiner’s rejection based on Nagano lacks a sufficient evidentiary basis. The Examiner has not identified a teaching in Nagano that cutout 12a has different restrictions on the motion of operating lever 3 about shaft 37 depending on where that lever is rotated about shaft 11. 7 Appeal 2014-009370 Application 11/970,586 Accordingly, we do not sustain the rejection of claims 1—14 as unpatentable over Nagano. DECISION For the above reasons, the Examiner’s rejection of claims 1—14 is affirmed. 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 8 Copy with citationCopy as parenthetical citation