10354115 (B.P.A.I. Dec. 23, 2008)

Ex Parte Yamanaka

Board of Patent Appeals and InterferencesDec 23, 2008

10354115 (B.P.A.I. Dec. 23, 2008)

1 2 3 4 5 UNITED STATES PATENT AND TRADEMARK OFFICE 6 ____________________ 7 8 BEFORE THE BOARD OF PATENT APPEALS 9 AND INTERFERENCES 10 ____________________ 11 12 Ex parte MASAHIRO YAMANAKA 13 ____________________ 14 15 Appeal 2008-3393 16 Application 10/354,115 17 Technology Center 3600 18 ____________________ 19 20 Decided: December 23, 2008 21 ____________________ 22 23 Before: WILLIAM F. PATE, III, MURRIEL E. CRAWFORD and JOSEPH 24 A. FISCHETTI, Administrative Patent Judges. 25 26 CRAWFORD, Administrative Patent Judge. 27 28 29 DECISION ON APPEAL 30 31 STATEMENT OF CASE 32 Claims 1-3 and 5-15 were rejected in the Final Office Action mailed 33 May 24, 2006. Appellant cancelled claims 13-14 in an Amendment filed 34 July 11, 2006, and the Examiner entered that Amendment via an Advisory 35 Appeal 2008-3393 Application 10/354,115 2 Action mailed July 24, 2006. Accordingly, Appellant appeals under 35 1 U.S.C. § 134 (2002) the rejection of remaining claims 1-3, 5-12 and 15.1 2 We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3 Appellant invented a bicycle crank arm assembly including a bicycle 4 crank arm and a tubular member. (Specification 2:¶8). 5 The only independent claim under appeal reads as follows: 6 1. A bicycle crank arm assembly, comprising: 7 8 a bicycle crank arm including a first end configured to be 9 coupled to an axle of a bottom bracket and a second end having 10 a bore for receiving a bicycle pedal shaft; 11 12 a tubular member retained in the bore of the cycle crank 13 arm in a press fit engagement, the tubular member including 14 15 a tubular portion having an external 16 circumferential surface non-releasably 17 retained in the bore of the bicycle crank arm 18 in a press fit engagement and an internal 19 circumferential surface being configured to 20 be coupled to the bicycle pedal shaft, and 21 22 1 We note that the rejection of the limitation “free of serrations” set forth on pages 12-13 of the Examiner’s Answer mailed October 4, 2007 appears to be a new ground of rejection under 37 C.F.R. § 41.39(a)(2). This new ground is not set forth in Section (6) of the Examiner’s Answer as required. Nevertheless, because Appellant filed a Reply Brief specifically addressing the rejection as required by 37 C.F.R. § 41.39(b)(2), we will treat the issue as moot and address the rejection on the merits. Appeal 2008-3393 Application 10/354,115 3 a plurality of serrations formed on the external 1 circumferential surface of the tubular 2 portion, each of the plurality of serrations 3 individually extending as a longitudinal 4 protrusion in an axial direction of the tubular 5 portion to non-rotatably couple the tubular 6 member to the bore of the bicycle crank 7 arm; and 8 9 a washer with an opening being disposed adjacent one 10 axial end of the tubular portion, 11 12 the bore of the second end of the bicycle crank arm being 13 free of serrations formed on and extending from an internal 14 circumferential surface of the bore. 15 16 The prior art relied upon by the Examiner in rejecting the claims on 17 appeal is: 18 Nagano US 4,446,753 May 8, 1984 19 Smith US 2003/006190 April 3, 2003 20 21 The Examiner rejected claims 1-3, 5-12 and 15 under 35 U.S.C. 22 § 112, first and second paragraphs. 23 The Examiner rejected claims 1, 3, 5-10 and 12 under 35 U.S.C. 24 § 102(b) as being anticipated by Nagano. 25 The Examiner rejected claims 2 and 11 under 35 U.S.C. § 103(a) as 26 being unpatentable over Nagano. 27 The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being 28 unpatentable over Nagano in view of Smith. 29 We REVERSE. 30 31 Appeal 2008-3393 Application 10/354,115 4 ISSUE 1 Did the Appellant show that the Examiner erred in finding that the 2 phrase “non-releasably retained” recited in claim 1 renders claim 1 3 indefinite? 4 Did the Appellant show that the Examiner erred in finding that the 5 recitation in claim 1 of “the bore of the second end of the bicycle crank 6 being free of serrations formed on and extending from an internal 7 circumferential surface of the bore” is not clearly supported by the 8 specification? 9 Did the Appellant show that the Examiner erred in finding that 10 Nagano discloses subject matter sufficient to anticipate the recitation in 11 claim 1 of “a tubular portion having an external circumferential surface non-12 releasably retained in the bore of the bicycle crank arm in a press fit 13 engagement?” 14 15 FINDINGS OF FACT 16 Appellant invented bicycle crank arm assembly 12 including tubular 17 member 44 and bicycle crank arm 14 having pedal attachment bore 40 18 (Specification 2, ll. 20-21; Figs. 3-4). Tubular member 44 is coupled to 19 pedal attachment bore 40 such that “once the tubular member 44 is press 20 fitted into the pedal attachment bore 40, the tubular member 44 cannot be 21 removed, i.e., the tubular member 44 is non-releasably coupled to the crank 22 arm 14.” (Specification 8, ll. 10-17.) 23 Cylindrical surface 52 is free of serrations when tubular member 44 is 24 not retained in pedal attachment bore 40 (Fig. 9). 25 Appeal 2008-3393 Application 10/354,115 5 Nagano discloses an adjustable length crank arm for a bicycle where 1 “a pair of first and second adapters are provided with engaging portions on 2 opposite sides of the crank arm respectively, the engaging portions being 3 drawn toward each other and press-contacted to both sides of the crank arm 4 by use of the connecting means, thereby rigidly fixing the adapters to the 5 crank arm. Thus, the crank of the invention eliminates the problem of a 6 loosening pedal shaft, or the separation of the adapters from the crankshaft 7 by vibrations or impacts during the bicycle’s running” (col. 2, ll. 12-24). 8 Nagano discloses that the length of the crank arm is adjusted by 9 removing and rotating first and second adapters 3, 4 relative to through bore 10 11 (col. 3, l. 51 through col. 4, l. 8). 11 First and second adapters 3, 4 are fixed to crank arm 1 via screw 12 threaded portion 21 of pedal shaft 2, one set screw 6, or screw member 5 13 (Figs. 2-5; col. 3, ll. 65-67; col. 4, ll. 23-27, 38-42). 14 A press fit is an interference or force fit made through the use of a 15 press. See ASM Material Engineering Dictionary 343 (1992). 16 17 PRINCIPLES OF LAW 18 The second paragraph of 35 U.S.C. § 112 requires claims to set out 19 and circumscribe a particular area with a reasonable degree of precision and 20 particularity. In re Johnson, 558 F.2d 1008, 1015, (CCPA 1977). In making 21 this determination, the definiteness of the language employed in the claims 22 must be analyzed, not in a vacuum, but always in light of the teachings of 23 the prior art and of the particular application disclosure as it would be 24 Appeal 2008-3393 Application 10/354,115 6 interpreted by one possessing the ordinary level of skill in the pertinent art. 1 Id. 2 A claim is definite if “one skilled in the art would understand the 3 bounds of the claim when read in light of the specification.” Personalized 4 Media Communications, LLC v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998). 5 “That some claim language may not be precise, however, does not 6 automatically render a claim invalid.” Seattle Box Company, Inc. v. 7 Industrial Crating & Packing, Inc. et al., 731 F.2d 818 (Fed. Cir. 1984). 8 “In many cases that give rise to litigation, however, determining the 9 ordinary and customary meaning of the claim requires examination of terms 10 that have a particular meaning in a field of art. Because the meaning of a 11 claim term as understood by persons of skill in the art is often not 12 immediately apparent, and because patentees frequently use terms 13 idiosyncratically, the court looks to ‘those sources available to the public 14 that show what a person of skill in the art would have understood disputed 15 claim language to mean.’ Those sources include ‘the words of the claims 16 themselves, the remainder of the specification, the prosecution history, and 17 extrinsic evidence concerning relevant scientific principles, the meaning of 18 technical terms, and the state of the art.’” Phillips v. AWH Corp., 415 F.3d 19 1303, 1314 (Fed. Cir. 2005) (internal citations omitted). 20 “Quite apart from the written description and the prosecution history, 21 the claims themselves provide substantial guidance as to the meaning of 22 particular claim terms. To begin with, the context in which a term is used in 23 the asserted claim can be highly instructive.” Phillips v. AWH Corp., 415 24 F.3d 1303, 1314 (Fed. Cir. 2005) (internal citations omitted). 25 Appeal 2008-3393 Application 10/354,115 7 “[U]nder proper circumstances, drawings alone may provide a 1 ‘written description’ of an invention as required by §112.” Vas-Cath Inc. v. 2 Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). 3 4 ANALYSIS 5 “Non-releasably retained” 6 The Examiner asserts that the phrase “non-releasably retained” in 7 claim 1 is indefinite because the Appellant does not distinguish between 8 “permanently non-releasably retained” and “temporarily non-releasably 9 retained” (Examiner’s Answer 7-9). However, claim terms do not have to 10 be exactly precise in every respect. See Seattle Box Company, Inc., 730 F.2d 11 at 705. The Examiner's focus during examination of claims for compliance 12 with the requirement for definiteness of 35 U.S.C. § 112, second paragraph, 13 is whether the claims meet the threshold requirements of clarity and 14 precision, not whether more suitable language or modes of expression are 15 available. Some latitude in the manner of expression and the aptness of 16 terms is permitted. As long as one skilled in the art would understand the 17 bounds of the claim term, the claim is definite. See Personalized Media 18 Communications, LLC, 161 F.3d 705. 19 In this case, both the claim itself and the specification provide 20 adequate guidance as to the meaning of “non-releasably retained.” See 21 Phillips, 415 F.3d at 1314. Independent claim 1 recites “a tubular portion 22 having an external circumferential surface non-releasably retained in the 23 bore of the bicycle crank arm in a press fit engagement” (emphasis added). 24 25 Appeal 2008-3393 Application 10/354,115 8 The specification recites: 1 [t]hus, the tubular member 44 can be press fitted into the pedal 2 attachment bore 40 so that the tubular member cannot rotate or 3 move axially. In other words, once the tubular member 44 is 4 press fitted into the pedal attachment bore 40, the tubular 5 member 44 cannot be removed, i.e., the tubular member 44 is 6 non-releasably coupled to the crank arm 44. 7 (Specification 8:10-14; emphasis added). Accordingly, a tubular portion in a 8 press fit engagement with a bore is “non-releasably retained,” and thus the 9 phrase is sufficiently definite for the purposes of 35 U.S.C. § 112, second 10 paragraph. 11 We will not sustain this rejection. 12 13 “Free of serrations” 14 The Examiner asserts that the Specification does not adequately 15 describe “the bore of the second end of the bicycle crank arm being free of 16 serrations” (Examiner’s Answer 12-13). However, Fig. 9 of the 17 Specification discloses cylindrical surface 52 being free of serrations (Reply 18 Brief 6-7). See Vas-Cath Inc, 935 F.2d at 1565. While press fitting tubular 19 member 44 into bore 40 may cause serrations 44e to deform bore 40, there is 20 no guarantee that such deformations would result. As Fig. 9 unambiguously 21 discloses cylindrical surface 52 being free of serrations, the Appellant has 22 sufficiently described this feature so as to comply with the first paragraph of 23 35 U.S.C. § 112. 24 We will not sustain this rejection. 25 26 27 Appeal 2008-3393 Application 10/354,115 9 Rejection in view of Nagano 1 Independent claim 1 recites “a tubular portion having an external 2 circumferential surface non-releasably retained in the bore of the bicycle 3 crank arm in a press fit engagement.” The Examiner admits that “Nagano 4 does not explicitly disclose the so-called ‘non-releasable, press fit 5 engagement’ between [tubular portions] 3 and 4 and the bore 11” 6 (Examiner’s Answer 15). The Examiner then asserts, however, that first and 7 second adapters 3, 4 are press fitted into through bore 11 of crank arm 1 8 (Examiner’s Answer 15-16). As support, the Examiner cites col. 2, lines 14-9 24 of Nagano: 10 [T]his invention is characterized in that a pair of first and 11 second adapters are provided with engaging portions on 12 opposite sides of the crank arm respectively, the engaging 13 portions being drawn toward each other and press-contacted to 14 both sides of the crank arm by use of the connecting means, 15 thereby rigidly fixing the adapters to the crank arm. Thus, the 16 crank of the invention eliminates the problem of a loosening 17 pedal shaft, or the separation of the adapters from the 18 crankshaft by vibrations or impacts during the bicycle’s 19 running. (Emphasis added.) 20 In other words, Nagano discloses that first and second adapters 3, 4 21 press against opposite sides of crank arm 1 in an axial direction of through 22 bore 11. However, a press fit is an interference fit where each of first and 23 second adapters 3, 4 would be pressed against through bore 11 in a radial 24 direction. Nagano does not disclose such a press fit between first and 25 second adapters 3, 4 and through bore 11. Indeed, first and second adapters 26 3, 4 are unlikely to be press fitted into through bore 11 because to do so 27 Appeal 2008-3393 Application 10/354,115 10 would impede the removal and rotation of first and second adapters 3, 4 for 1 adjusting the length of crank arm 1. 2 The Examiner asserts that “Nagano’s tubular portion 41 must be or is 3 capable of being non-releasably press fitted into the bore 11 of the crank arm 4 1 during the time of the operating of the bicycle” (Examiner’s Answer 16). 5 However, first and second adapters 3, 4 are fixed to crank arm 1 during 6 operation of the bicycle by connecting means (e.g., screw threaded portion 7 21 of pedal shaft 2, one set screw 6, or screw member 5), and not by a press 8 fitting of first and second adapters 3, 4 into through bore 11. 9 Accordingly, we will not sustain this rejection. 10 Claims 2-3, 5-12 and 15 depend from claim 1 and are rejected as 11 being either anticipated by or obvious in view of Nagano. For the same 12 reasons we do not sustain the rejection of claim 1, we also do not sustain 13 these rejections. 14 15 CONCLUSIONS OF LAW 16 The Appellant did show that the Examiner erred in finding that the 17 term “non-releasably retained” recited in claim 1 is indefinite. We will not 18 sustain the rejection of claims 1-3, 5-12 and 15 under 35 U.S.C. § 112, 19 second paragraph. 20 The Appellant did show that the Examiner erred in finding that the 21 recitation in claim 1 of “the bore of the second end of the bicycle crank 22 being free of serrations formed on and extending from an internal 23 circumferential surface of the bore” is not clearly supported by the 24 Appeal 2008-3393 Application 10/354,115 11 Specification. We will not sustain the rejection of claims 1-3, 5-12 and 15 1 under 35 U.S.C. § 112, first paragraph. 2 The Appellant did show that the Examiner erred in finding that 3 Nagano discloses subject matter sufficient to anticipate the recitation in 4 claim 1 of “a tubular portion having an external circumferential surface non-5 releasably retained in the bore of the bicycle crank arm in a press fit 6 engagement.” We will not sustain the rejection of claims 1, 3, 5-10 and 12 7 under 35 U.S.C. § 102(b) as being anticipated by Nagano; claims 2 and 11 8 under 35 U.S.C. § 103(a) as being unpatentable over Nagano; and claim 15 9 under 35 U.S.C. § 103(a) as being unpatentable over Nagano in view of 10 Smith. 11 12 DECISION 13 The decision of the Examiner to reject claims 1-3, 5-12 and 15 is 14 reversed. 15 16 REVERSED 17 18 19 LV 20 21 22 23 24 25 John C. Robbins 26 GLOBAL IP COUNSELORS, LLP 27 1233 Twentieth Street, NW, Suite 700 28 Washington, DC 20036 29