Ex Parte Watarai et al

Patent Trial and Appeal Board

Sep 28, 2016

13249909 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/249,909 09/30/2011 Etsuyoshi Watarai
29863 7590 09/30/2016
DELAND LAW OFFICE
P.O. BOX69
KLAMATH RIVER, CA 96050-0069
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.
SIC-05-028-1 7465
EXAMINER
LIU,HENRYY
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
bdeland 1992@gmail.com
jdeland@sisqtel.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ETSUYOSHI WAT ARAI, SHAHAN A SATOSHI, and
SOUTA YAMAGUCHI
Appeal2014-009458
Application 13/249,909
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Etsuysoshi Watarai et al. (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Shimano, Inc., is identified as the real party in interest. Appeal Br. 1.
Appeal2014-009458
Application 13/249,909
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A rear end structure for a bicycle frame, wherein the
structure comprises:
a continuous, one-piece bicycle frame end including:
a forward portion and a rearward portion, wherein the
forward portion extends from a chain stay and a seat stay, and
wherein the rearward portion extends rearward from the forward
portion;
wherein the frame end defines an axle receiving opening
dimensioned to receive a bicycle wheel axle therein to rotate
around a rotational axis, wherein the axle receiving opening is
intersected by a horizontal axis of a Cartesian coordinate system
when viewed along the rotational axis when the bicycle frame
end is in an upright position of normal operation of the bicycle
along a horizontal surface, wherein the axle receiving opening
forms the origin of the Cartesian coordinate system, and wherein
the zero axis of the Cartesian coordinate system is the portion of
the horizontal axis forward of the origin; and
a derailleur-attachment structure located from
approximately 180° to approximately 240° in the Cartesian
coordinate system;
wherein the frame end does not form any part of a bicycle
derailleur.
Appeal Br. 15 (Claims App.).
REJECTIONS
I. Claims 1-18 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1-16 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Savard (US 6,793,598 Bl, issued Sept. 21, 2004) and
Ando (US 5,624,335, issued Apr. 29, 1997).
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Application 13/249,909
Ill. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Savard, Ando, and Shahana (US 2004/0110587 Al, published June 10,
2004).
ANALYSIS
Rejection I
Claim 1 recites that "the frame end does not form any part of a bicycle
derailleur." Appeal Br. 15 (Claims App.). The Examiner considers this
limitation to be indefinite, stating "the parts the frame end does not form can
be any part of the bicycle derailleur. The limitation does not exclude the
frame end from being part of the derailleur but as long as it is not on one part
of the derailleur then the limitation is met." Final Act. 3 (emphasis added).
Appellants contend the disputed limitation "is clear that the frame end
forms no part of a derailleur." Appeal Br. 3 (emphasis added). Appellants
also contend the Specification does not support "the allegation that the frame
end could form part of the derailleur." Id. at Br. 4.
Appellants' contentions are persuasive. We construe the claim
terminology "does not form any" to mean "is not any." Accordingly, we
construe the disputed limitation to mean "the frame end is not any part of a
bicycle derailleur." Our construction excludes the frame end from being
part of a bicycle derailleur. Consequently, we disagree with the Examiner's
contrary construction. Final Act. 3 (emphasis added). Our construction is
consistent with Appellants' Specification. For example, the Specification
describes that frame end 34 comprises rearward portion 42, and "[r]earward
portion 42 ... forms a derailleur-attachment structure." See Spec. i-f 19
(emphasis added); Fig. 1. Thus, the derailleur forms no part of the frame of
frame end 34. It is attached to frame end 34.
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Application 13/249,909
Accordingly, because the meaning of claim 1 is sutliciently clear
when read in light of the Specification, we do not sustain the rejection of
claim 1 and dependent claims 2-18 under 35 U.S.C. § 112, second
paragraph.
Rejection II
Claim 1 further recites "a continuous, one-piece bicycle frame end
including ... a derailleur-attachment structure located from approximately
180° to approximately 240° in the Cartesian coordinate system." Appeal Br.
15 (Claims App.) (emphasis added).
Appellants contend:
Neither Savard nor Ando discloses or suggests a derailleur
mounting structure that forms part of a continuous, one-piece
bicycle frame end, wherein the derailleur attachment structure is
located in the range of from approximately 180° to
approximately 240°, and wherein the frame end does not form
any part of a bicycle derailleur as recited in claim 1.
Appeal Br. 6-7.
The Examiner finds Savard discloses all limitations of claim 1 except
for "a derailleur-attachment structure located from approximately 180° to
approximately 240° in the Cartesian coordinate system." Final Act. 4
(emphasis added); see Savard, Fig. 1. The Examiner finds Ando discloses a
derailleur attachment structure 18 (Axis B) located at an angle within the
claimed range. Final Act. 4 (citing Ando, Fig. 1 ). The Examiner concludes
it would have been obvious to change the derailleur attachment structure in
Savard with the attachment angle position in Ando "to fit a derailleur with
the same configuration as the one in ANDO." Final Act. 4--5.
Appellants note Savard discloses a frame end 22 including derailleur
attachment structure for attaching base member 30 of a derailleur. Appeal
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Application 13/249,909
Br. 6 (citing Savard, Fig. 1 ). Appellants point out Ando describes that "rear
derailleur 100 includes a bracket 5 ... and a base member 6 connected to the
bracket 5 through a pivot member 18 to be pivotable about an axis B." Id.
(citing Ando, col. 2, 11. 61---64; Fig. 1). Thus, Appellants contend, bracket 5
is a part of a derailleur, and not of frame 10. Id.
Appellants emphasize the claimed "derailleur-attachment structure is
part of the continuous, one-piece bicycle frame end, and the frame end does
not form any part of a bicycle derailleur." Appeal Br. 6. Appellants assert
Ando's pivot member 18 is not located on frame end 12a, and so it cannot be
interpreted to be a derailleur attachment structure, as claimed. Id.; see Ando,
Fig. 2. Rather, Appellants contend, Ando's pivot member 18 is part of
derailleur 100, and so it does not meet the requirement that "the derailleur
attachment structure does not form any part of a bicycle derailleur." Id.
The Examiner responds, stating "[t]he ordinary definition of
'derailleur' includes the case where the bracket (5) is not included in the
assembly." Ans. 10. The Examiner appears to be referring to Ando's
bracket 5. See Ando Fig. 1. The Examiner provides a definition of
"derailleur" as "a mechanism for shifting gears on a bicycle that operates by
moving the chain from one set of exposed gears to another." Id. (emphasis
omitted). The Examiner states that, in this definition, "[t]here is no mention
of a mounting bracket being required nor is the bracket part of the gear
shifting mechanism. The bracket can be considered part of the bicycle frame
or an attachment to the bicycle frame." Id.
Appellants' position is persuasive. Claim 1 requires the derailleur-
attachment structure to be part of the frame end, the frame end not to form
any part of a derailleur, and, therefore, the derailleur-attachment structure
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Application 13/249,909
not to form any part of a derailleur. In contrast, Ando describes that "rear
derailleur 100 includes a bracket 5 formed of sheet metal and fixed to a
bicycle frame 12." See Ando, col. 2, 11. 61---62. Accordingly, Ando
discloses bracket 5 is part of derailleur 100 and attached to bicycle frame 12.
Ando's pivot member 18 also forms part of derailleur 100 and is not part of
a frame end (rear fork end 12a). Compare Ando, Figs. 1, 2.
Regarding the claim limitation that the "derailleur-attachment
structure [is] located from approximately 180° to approximately 240° in the
Cartesian coordinate system," the Examiner concludes:
If not inherent, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to
change the derailleur attachment structure such that it has an
angle 180° to approximately 240° in the Cartesian coordinate
system from the axle. Setting the attachment structure at the
proper angle and location would allow a derailleur of a particular
configuration to be used with the bicycle. In addition, it has been
held that where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or \'l/orking ranges
involves only routine skill in the art. In re Aller, 105 USPQ 233.
Final Act. 5.
Even assuming Ando' s bracket 5 is not part of derailleur 100,
Appellants persuasively challenge the Examiner's position regarding the
obviousness of the claimed angular range of the location of the derailleur-
attachment structure. First, the Examiner provides no basis to support the
mentioned inherency.
Second, the applicable legal principles in regard to "optimization" of a
claimed variable are as follows:
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
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ranges by routine experimentation." [Jn re] Aller, 220 F.2d
[454,] 456 [(CCPA 1955)]. This rule is limited to cases in which
the optimized variable is a "result-effective variable." In re
Antonie, 559 F.2d 618, 620 (CCPA 1977); see [In re] Boesch,
617 F.2d [272,] 276 [(CCPA 1980)] ("[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily
within the skill of the art.").
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012).
Appellants explain how the claimed angular range of the location of the
derailleur-attachment structure is result-effective:
The result which the Appellants seek is the ability to construct
and attach a derailleur that has a very low lateral profile. See
paragraphs [0038] and [0039] of the specification. One reason
why such a low-profile derailleur may be constructed is because,
as Appellants teach at paragraph [0041], the base member (70)
of the disclosed derailleur is located from approximately 180° to
approximately 240° in the claimed Cartesian coordinate system.
Appeal Br. 11 (emphasis added).
Id.
Regarding Savard and Ando, Appellants contend:
Neither Savard nor Ando recognize that the angular position of
the frame-mounting location for the derailleur within the defined
Cartesian coordinate system (defined by the pages containing
Fig. 1 of Ando and Fig. 1 of Savard) has any impact on the lateral
profile of the derailleur (i.e., the extent to which the derailleur
protrudes upwardly from the page). In other words, the prior art
does not recognize that the angular position of the derailleur
attachment structure of a frame end is a result-effective variable
for the desired result of a derailleur having a low lateral profile.
The Examiner responds:
All of the claim limitations and result effective variables were
taught in SAVARD and ANDO. Also, this mounting location is
simply an optimum or workable range obtained through routine
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Application 13/249,909
experimentation or calculation along with various other
derailleur dimensions and specifications to obtain desired gear
shifting qualities.
Ans. 12.
We agree with Appellants that the Examiner fails to identify sufficient
evidence to show that "the angular position of the derailleur attachment
structure of a frame end is [recognized as] a result-effective variable for the
desired result of a derailleur having a low lateral profile." Appeal Br. 11;
see In re Antonie, 559 F.2d at 620 (finding no disclosure of the relationship
between the recited variable and result in the prior art). Thus, we also agree
with Appellants that the Examiner fails to provide an adequate reason why
one skilled in the art would have optimized the angular position of derailleur
attachment structure of a frame end in Savard's bicycle rear end structure to
have the specific numerical values recited in claim 1.
Accordingly, we do not sustain the rejection of claim 1 and dependent
claims 2-16 and 18 as unpatentable over Savard and Ando.
Rejection III
The Examiner's application of Shahana to the rejection of dependent
claim 17 does not cure the deficiencies of the rejection of claim 1. Final
Act. 8-9. Accordingly, we do not sustain the rejection of claim 17 as
unpatentable over Savard, Ando, and Shahana.
DECISION
We reverse the rejections of claims 1-18.
REVERSED
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