Shimano Inc.

Patent Trials and Appeals Board

Jan 17, 2020

14644855 - (D) (P.T.A.B. Jan. 17, 2020)

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.
14/644,855 03/11/2015 Toshio Tetsuka SIC-11-018-2 6602
29863 7590 01/17/2020
DELAND LAW OFFICE
P.O. BOX 69
KLAMATH RIVER, CA 96050-0069
EXAMINER
STORMER, RUSSELL D
ART UNIT PAPER NUMBER
3993
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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):
bdeland1992@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 TOSHIO TETSUKA
Appeal 2019-006235
Reissue Application 14/644,855
Patent 8,833,182
Technology Center 3900
BEFORE ALLEN R. MACDONALD, ERIC B. CHEN, and
JENNIFER L. McKEOWN, Administrative Patent Judges.
MCKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, 6, 8–20, 22–25, 28–32 and 34–
42 in the application for reissue of U.S. Patent 8,833,182. The Examiner
indicated that claims 26, 27, and 33 are allowable. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Shimano, Inc.
Appeal Br. 1.
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Reissue Application 14/644,855
Patent 8,833,182

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We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to “bicycles and, more particularly, to various
features of a bicycle input force processing apparatus.” Spec., col. 1, ll. 6–8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A bicycle crank arm apparatus comprising:
a crank arm having a crank axle mounting portion and a pedal
mounting portion; [and]
a circuit-mounting structure disposed between the crank axle
mounting portion and the pedal mounting portion, wherein the
circuit-mounting structure is configured to detachably mount a
measurement board having a sensor mounted thereon for
measuring an input force applied to the measurement board by
the crank arm;
an electrical connector disposed at the circuit-mounting
structure, wherein the electrical connector is configured to
detachably connect to another electrical connector; and
electrical wiring attached to the electrical connector;
wherein the electrical connector is mounted to the crank arm
so that the electrical connector remains at the crank arm when
the measurement board is absent from the crank arm.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Videon US 3,780,817 Dec. 25, 1973
Phillips US 7,806,006 B2 Oct. 5, 2010
Longman WO 2011/063468 Al June 3, 2011

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OBJECTIONS/REJECTIONS
The Examiner objected to the drawings under 37 C.F.R. 1.83(a) as
failing to show the subject matter as claimed. Final Act. 2.
The Examiner objected to the Specification under 37 C.F.R.
1.75(d)(1) for lack of proper antecedent basis for the claimed subject matter.
Final Act. 2–3.
The Examiner rejected claims 3, 5, 6, 14, 15, 22, 36, and 38 under 35
U.S.C. 112(a) as failing to provide sufficient written description support.
Appeal Br. 3–7.
The Examiner rejected claims 1, 3, 5, 6, 8, 10–20, 22–25, 28–32, and
34–42 under 35 U.S.C. § 103 as unpatentable over Phillips, Videon, and
Longman. Final Act. 7–15.
The Examiner rejected claim 9 under 35 U.S.C. § 103 as unpatentable
over Phillips, Videon, Longman, and Meyer. Final Act. 7–15.
ANALYSIS
THE WRITTEN DESCRIPTION REJECTION AND THE OBJECTIONS2
Claims 3, 5, 6, 14, 15, 22, 36, and 38
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 3, 5, 6, 14, 15, 22, 36, and 38 for lack written
description support and in objecting to the Drawings and Specification.
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to [a] skilled artisan

2 We note objections, generally, are petitionable matters. However,
the objections to the Drawings and Specification here turn on the same issue
as the written description rejection. Compare Final Act. 2–3 with Appeal
Br. 9–11. Namely, the Examiner objections and written description rejection
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and show that the inventor actually invented the invention claimed.” Ariad
Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
(citations omitted). “[T]he written description requirement is satisfied by the
patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.”’
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002)
(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997)).
The underlying crux of the dispute here is the Examiner’s
interpretation of the claimed “circuit-mounting structure…configured to
detachably mount a measurement board.” The Examiner interprets this
limitation under 25 U.S.C. 112, sixth paragraph (pre-AIA) and identifies the
corresponding structure as projection with threaded openings for attaching
the measurement board. See Final Act. 4–7. In particular, the Examiner
defines the corresponding structure for the circuit mounting structure as

depend on the Examiner’s interpretation of the circuit mounting structure
limitation. Accordingly, our analysis and decision with respect to the
written description rejection will also address the disputed objections. See,
e.g., Ex Parte Edward J. Domanico, 2009-014289, 2011 WL 4484144
(BPAI Sept. 21, 2011) (deciding an objection to the Specification for lack of
antecedent basis along with a written description rejection because the
objection turned on the same issue and noting that the MPEP sets forth that a
new matter objection is appealable when the issue is the basis for both an
objection and a rejection).
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A projection or protuberance extending from a surface of
the crank arm, comprising a circuit-mounting opening containing
further circuit-mounting structures in the form of threads, and
may further include a threaded fastener which can extend
(through openings in the measurement board and) into the
corresponding opening in the circuit-mounting structure. An
alternative structure for this would be threaded nuts welded or
bonded to the crank arm as described in the specification.
Final Act. 6–7.
Notably, the Examiner’s interpretation excludes openings in the crank
arm without a projection, such as openings 82c and 82e identified in Figure
3 below.

Figure 3 including highlighted openings (82c and 82e) in the crank arm
Under this interpretation, the Examiner determines the Specification lacks
sufficient written description support for a circuit mounting opening of the
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circuit mounting structure with the further limitations for the opening: a
cover mounting to the opening (claim 3), an electrical connector within the
opening (claims 5, 6, and 22), measurement board mounted the within the
opening (claim 14), and the opening having a floor (claims 15, 36, and 38).
See Final Act. 2–3 (discussing the claim limitations in the context of the
objection to the Specification).
Appellant, on the other hand, argues the Examiner erred by construing
the limitation under 35 U.S.C. 112, sixth paragraph (pre-AIA). Appeal
Br. 5–6; Reply Br. 4. Appellant, in particular, asserts that the Examiner
ignores the recited “measurement board.” Appeal Br. 5. According to
Appellant, a skilled artisan would understand “measurement board” in
conjunction with “circuit” to be an electronic circuit board and there is a
well-known class of structures for mounting electronic circuit boards.
Appeal Br. 5–6. Appellant maintains that the claimed limitation, thus,
recites sufficiently definite structure and should not be interpreted as a
means plus function limitation. Id.
We disagree. As the Examiner explains, “structure” of the claimed
circuit mounting structure is a generic placeholder and this generic
placeholder “is modified by the functional language ‘configured to
detachably mount,’ and not by any specific structure.” Ans. 5. Appellant’s
blanket assertion that there is a well-known class of structures to perform the
recited mounting (Appeal Br. 5–6; Reply Br. 4) is unpersuasive. Appellant
fails to identify the alleged class of structures nor does Appellant provide
any evidence to support this argument. See, e.g., Diebold Nixdorf, Inc. v.
International Trade Commission, 899 F.3d 1291 (Fed. Cir. 2018)
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(considering that there was no evidence presented that the disputed term
“was reasonably well understood by persons of ordinary skill in the art to
refer to a structure or class of structures” in finding that the term should be
construed under 35 U.S.C. 112, sixth paragraph (pre-AIA)).
Moreover, the Specification describes that a measurement board may
comprise a substrate and the substrate “may be a printed circuit board or a
semiconductor, metal or other conductive or nonconductive rigid or flexible
sheet.” Spec. col. 3, ll. 51–53 (emphasis added). Appellant’s assertion then
that the claimed measurement board is limited to only a printed circuit board
is unsupported. As such, we are not persuaded that the Examiner erred in
construing the recited circuit mounting structure as a means plus function
limitation.
Nevertheless, we agree the Examiner erred in identifying the
corresponding structure disclosed in the Specification. While the
Specification describes, “first and second circuit-mounting structures 130
and 134 are structured as cylindrical pillars or some other forms of
projections or protuberances,” (col. 3, ll. 37–39), the Specification
additionally includes alternative circuit mounting structures. Notably, as
pointed out by Appellant, the Specification describes the circuit mounting
structure may include threaded openings in the crank arm. See, e.g., Spec.
col. 5, ll. 51–57; col. 7, ll. 20–25; see also Appeal Br. 7; Reply Br. 4–5. As
such, we are persuaded that the Examiner erred in unduly narrowing the
corresponding structure of the circuit mounting structure to projections with
threaded openings and determine that the circuit mounting structure may
include circuit-mounting openings in the crank arm.
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Accordingly, based on the record before us, we reverse the written
description rejection of claims 3, 5, 6, 14, 15, 22, 36, and 38. For the same
reasons, the objections to the Drawings and Specification are also reversed.

THE 35 U.S.C. § 103 REJECTION BASED ON PHILIPS, VIDEON, AND LONGMAN
Claims 1, 3, 5, 6, 10–20, 22–25, 28–32, and 34–42
Based on the record before us, we are not persuaded that the Examiner
erred in concluding that claims 1, 3, 5, 6, 10–20, 22–25, 28–32, and 34–42
are unpatentable over Philips, Videon, and Longman.
Appellant argues that the cited combination of Phillips, Videon, and
Longman does not teach or suggest, “wherein the electrical connector is
mounted to the crank arm so that the electrical connector remains at the
crank arm when the measurement board is absent from the crank arm,” as
recited in claim 1. Appeal Br. 12–13; see also claim 10 (reciting similarly
limitations). Appellant acknowledges that Longman teaches detachable
electrical connectors, but maintains that “when [Longman’s] module is
removed from the crank arm, the socket or connector is carried along with it.
No connector remains at the crank arm when the device or module is absent
from the crank arm.” Appeal Br. 16. According to Appellant,
the claims require an electrical connector to remain at the crank
arm when the measurement board is removed from the crank
arm. Thus, when Longman's rechargeable battery-operated
measurement board is removed from the crank arm, the charging
socket will be removed with it, and no electrical connector,
socket or otherwise, will remain at the crank arm.
Appeal Br. 16–17.
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We find this argument unpersuasive. The Examiner merely relies on
Longman as teaching detachable connectors. See, e.g., Final Act. 9 (finding
that Longman’s “apparatus may include electrical wiring and electrical
connectors configured to detachably connect to other electrical
connectors.”). As the Examiner explains, Longman’s “‘contact points or
connectors,’ a ‘plug in’ external power supply, a ‘DC jack,’ and an
‘electrical socket arranged to receive a jack plug,’” are “all [] detachable
electrical connectors.” Ans. 14; see also Ans. 16 (finding that “by using
sockets, plugs, and jacks, Longman teaches that one electrical connector can
remain at the crank arm when a second electrical connector is removed.”);
Longman, p. 18–19 (discussing that charging means may be remote and
connected to the device). The Examiner then combines Longman’s
detachable connectors with Phillips and Videon to satisfy the claimed
invention.
As the Examiner points out, Appellant solely challenges the
Examiner’s reliance on Longman, without considering the combination as
set forth by the Examiner. Ans. 17; see, e.g., Appeal Br. 12–17 (discussing
only the cited portions of Longman without addressing the teachings of
Phillips and Videon); Reply Br. 5–7 (same). One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As such, we are not persuaded of error in the Examiner’s rejection of
independent claims 1 and 10.
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Appellant additionally argues the Examiner erred in relying on design
choice to support the determination of obviousness for dependent claims 35–
38. See Appeal Br. 17–18; Reply Br. 8. For example, Appellant argues that
rigidly mounting (claims 35 and 37) and disposing the electrical connector
on the bottom floor of the circuit mounting opening (claims 36 and 38)
provides certain benefits and the Examiner fails “to provide any reason why
one of ordinary skill in the art would” rigidly mount or dispose the electrical
connector on the bottom floor. Reply Br. 8.
We find these arguments unpersuasive. As the Examiner points out, a
skilled artisan would have understood the limited choices at the time of the
invention, namely rigid or non-rigid mounting and placement within a
limited space. Ans. 17–18. The Examiner additionally notes that Appellant
has not shown any criticality with respect to these limitations. We agree
with the Examiner that selecting one of the limited choices would have been
obvious to a skilled artisan at the time of the invention as a design choice.
See, e.g., ACCO Brands Cor. V. Felllowes, Inc., 813 F.3d 1361 (Fed. Cir.
2016) (noting that there are only two possible arrangement for sensor and
finding that each arrangement is obvious as a design choice); Ex parte
Spangler, 2019 WL 1130499 (PTAB 2019) (informative) (concluding that
design choice supported obviousness when Appellant failed to show the
claimed limitation was critical); In re Kuhle, 526 F.2d 553, 555 (CCPA
1975) (holding that the particular placement of a contact in a conductivity
measuring device solves no stated problem and is an obvious matter of
design choice within the skill in the art). As such, we are not persuaded that
the Examiner erred in rejecting claims 35–38 as obvious.
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Accordingly, based on the record before us, we affirm the Examiner’s
rejection of claims 1, 3, 5, 6, 10–20, 22–25, 28–32, and 34–42 as
unpatentable over Philips, Videon, and Longman.
Claim 8
Dependent claim 8 recites that the electrical wiring, which is attached
to the electrical connector in claim 1, is disposed within the crank arm. The
Examiner relies on Longman for this limitation. See Final Act. 10 (finding
that “the electrical connector may be disposed within the crank arm as taught
by Longman.”). The Examiner, however, does not sufficiently explain how
Longman at least suggests disposing electrical wiring, which is connected to
the electrical connector, within the crank arm. While the Examiner points to
Longman’s “self-contained inductive charging coil,” (Ans. 17 (citing
Longman, p. 18)), it is unclear how this supports an electrical wiring
connected to the electrical connector and disposed within the crank arm.
Without further explanation, we are left to speculate as to how Longman (in
combination with Philips and Videon) describes this limitation.
Consequently, we are constrained by the record to find that the Examiner
erred in concluding Longman, combined with Philips and Videon, teach the
limitations of claim 8.
Accordingly, based on the record before us, we reverse the rejection
of claim 8 as unpatentable over as unpatentable over Philips, Videon, and
Longman.
THE 35 U.S.C. § 103 REJECTION BASED ON
PHILIPS, VIDEON, LONGMAN, AND MEYER
Claim 9
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Based on the record before us, we are not persuaded that the Examiner
erred in concluding that claim 9 is unpatentable over Philips, Videon,
Longman, and Meyer. Appellant does not separately argue the patentability
of claim 9 and, instead, relies on the arguments presented for claim 1. See
Appeal Br. 18; Reply Br. 9. For the reasons discussed above, we find these
arguments unpersuasive. Accordingly, based on the record before us, we
affirm the rejection of claim 9 as unpatentable over Philips, Videon,
Longman, and Meyer.
CONCLUSION
The Examiner’s rejection under 35 U.S.C., first paragraph (pre-AIA)
of claims 3, 5, 6, 14, 15, 22, 36, and 38 and the Examiner’s objections to the
Drawings and Specification are reversed.
The Examiner’s rejections under 35 U.S.C. § 103 of claims 1, 3, 5, 6,
9–20, 22–25, 28–32 and 34–42 is affirmed, but the Examiner’s rejection
under 35 U.S.C. 103 of claim 8 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. §/
37 C.F.R.
Reference(s)/
Basis
Affirmed Reversed
Drawings/
Specification
Objection -
37 C.F.R.
1.75(d)(1)
Drawings/
Specification
3, 5, 6, 14,
15, 22, 36,
and 38
112, first
(pre-AIA)
3, 5, 6, 14,
15, 22, 36,
and 38
1, 3, 5, 6, 8,
10–20, 22–
103 Philips,
Videon, and
Longman
1, 3, 5, 6,
10–20, 22–
8
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25, 28–32
and 34–42
25, 28–32
and 34–42
9 103 Philips,
Videon,
Longman, and
Meyer
9
Overall
Outcome
1, 3, 5, 6,
9–20, 22–
25, 28–32
and 34–42
8

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART