DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miki et al. (U.S. P.G. Publication No. 2009/0315692 A1; “Miki”) in view of Hara (U.S. P.G. Publication No. 2014/0070930 A1; “Hara”).
Miki discloses:
Regarding claim 1:
A bicycle control assembly (depicted in FIG. 2, 4) for operating an electromechanical gear shifting device (¶ 13), comprising:
a housing (60; FIG. 4) mountable to the bicycle (depicted in FIG. 1-2);
a controller (158; FIG. 17) located within the housing (FIG. 17 depicts controller 158 disposed inside of the housing 60);
a wireless communication module (70) connected to the controller and located within the housing (depicted in FIG. 24);
an operating member (264; FIG. 24) that is a shifting operating member (¶ 89,”a brake lever assembly 264 that includes a conventional electric shifting mechanism”) movably connected to the housing (depicted in FIG. 24); and electronic componentry disposed on the operating member (¶ 89, “conventional electric shifting mechanism”), the electronic componentry in communication with the controller (via wiring 280, see in FIG. 24; ¶ 94), wherein the controller is configured to generate a signal to be wirelessly transmitted by the wireless communication module to change a shift position of the electromechanical gear shifting device responsive to an electronic input (¶ 96, “The removable radio communication unit 70 includes all of the functionality and structure described above in the first embodiment but additionally is configured to process signals produced by shifting movements of the brake lever 122 and shifter lever 124 about the Axis A2 andA3 . The removable radio communication unit 70 is further configured to broadcast corresponding radio signals via the antenna 68 to the controller/display unit 246, which in turn takes appropriate positioning control of the electrically powered front derailleur and the electrically powered rear derailleur”; see also ¶¶ 89, 94 regarding its “electric shifting mechanism” that is operatively connected to wire harness 280).
Miki discloses an electrical input positioned on the operating member (depicted at the distal end of wire harness 280 in FIG. 24) in an electric shifting mechanism (¶ 89, “electric shifting mechanism”). However Miki does not expressly disclose a particular configuration for the electronic input e.g. that the electronic input is an electric switch.
Hara teaches an electric switch (SW1, SW2; ¶ 31, 34) as a known configuration/technique for an electronic input in an electric shifting mechanism. (¶ 30, “electric shifters”; ¶ 31, “The shift operating members 44 and 45 are pushed toward a center plane of the bicycle to depress electrical switches SWl and SW2, respectively. . . . Here, operation of the shift operating member 44 normally causes the rear derailleur 22 to perform a downshift operation such that the chain 26 moves to a larger one of the rear sprockets 46, while operation of the shift operating member 45 normally causes the rear derailleur 22 to perform an upshift operation such that the chain 26 moves to a smaller one of the rear sprockets 46”; see also ¶ 34).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, Miki such that its electronic input is an electric switch, as taught by Hara, as it is a known configuration/technique for an electronic input in an electric shifting mechanism. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified that the use of a known technique to improve similar devices in the same way is a rationale that supports a conclusion of obviousness. See MPEP § 2143. In this case, one of ordinary skill in the art at the time of the invention would recognize that both Miki and Hara are drawn to analogous/similar structures i.e. electrical shifters, and would therefore recognize that modifying Miki in view of the known technique taught in Hara as described supra would, with reasonable predictability, result in Miki’s electronic input being provided as an electrical switch in particular i.e. the distal end of the wire harness 280 being operatively connected to an electrical switch.
Miki as modified above further teaches the following:
Regarding claim 2:
The bicycle control assembly of claim 1, further comprising a power supply (166) located in the housing (depicted in FIG. 16); and a cable (280 in FIG. 4; FIG. 2 in Hara depicts a cable connecting the switches SW1 and SW2) extending from the housing to the operating member connecting the power supply and the electronic componentry (depicted in at least FIG. 24).
Regarding claim 3:
The bicycle control assembly of claim 1, wherein the operating member is a shift lever assembly (124 in FIG. 25; ¶ 96), and the bicycle control assembly further comprises a brake lever (122), the brake lever is connected to the housing (depicted in FIG. 24-25).
Regarding claim 4:
The bicycle control assembly of claim 3, wherein the shift lever assembly is pivotally connected to the housing to move relative to the brake lever (¶ 96).
Regarding claim 20:
A bicycle control assembly (depicted in FIG. 2, 4) for operating an electromechanical gear shifting device (¶ 13), comprising:
a housing (60; FIG. 4) mountable to the bicycle (depicted in FIG. 1-2);
a controller (158; FIG. 17);
a wireless communication module (70) connected to the controller and located within the housing (depicted in FIG. 24);
a shift lever (124; FIG. 25) movably connected to the housing (¶ 96);
a brake lever (122; FIG. 25) movably coupled to the housing (¶ 96);
electronic componentry disposed on the operating member (¶ 89, “conventional electric shifting mechanism”),
the electronic componentry including an electrical switch in communication with the controller (switches SW1, SW2 of Hara located on the operating member as shown in FIG. 2 in Hara and at the distal end of wire harness 280 in FIG. 24 of Miki; ¶ 94), wherein the controller is configured to generate a signal to be wirelessly transmitted by the wireless communication module to change a shift position of the electromechanical gear shifting device responsive to an input from the electrical switch (¶ 96, “The removable radio communication unit 70 includes all of the functionality and structure described above in the first embodiment but additionally is configured to process signals produced by shifting movements of the brake lever 122 and shifter lever 124 abouttheAxisA2 andA3 . The removable radio communication unit 70 is further configured to broadcast corresponding radio signals via the antenna 68 to the controller/display unit 246, which in turn takes appropriate positioning control of the electrically powered front derailleur and the electrically powered rear derailleur.”).
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miki in view of Hara, as applied to claim 4 above, and further in view of Tetsuka (U.S. Patent No. 7,854,180 B2; “Tetsuka”).
Miki as modified above teaches:
Regarding claim 5:
The bicycle control assembly of claim 4, wherein the input is generated when the electrical switch is actuated (¶ 34 in Hara).
Hara teaches that the switches SW1 and SW2 are open to other particular constructions (¶ 31). However, Miki and Hara do not expressly disclose that the electrical switch being a dome switch.
Tetsuka teaches the electrical switch being a dome switch (73, 74; see dome elements 73a, 74a in FIG. 1 actuated via operating parts 42r, 44r that are pivoted toward the brake lever 31f; col. 9, ll. 34-49; see also col. 14 ll. 20-49) as a particular switch construction (col. 9, l. 66 – col. 11, l. 10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, Miki such that the electrical switch is a dome switch, as taught by Tetsuka, as a particular switch construction.
Miki as modified above further teaches the following:
Regarding claim 6:
The bicycle control assembly of claim 5, wherein the electrical switch is configured to be actuated when a user urges the shift lever assembly toward the brake lever, causing a depression of the dome switch (col. 9, ll. 34-49 in Tetsuka).
Regarding claim 7:
The bicycle control assembly of claim 6, wherein the shift lever assembly includes a shift lever (42r, 44r in Tetsuka) including a distal portion (at 42r, 44r in FIG. 7 in Tetsuka) and a proximal portion (at 58 in FIG. 7 in Tetsuka), the proximal portion movably supported by the housing (via pivot shaft 58 in Tetsuka), and the electrical switch is located at the distal portion of the shift lever (depicted in FIG. 7 in Tetsuka).
Claim(s) 8-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miki in view of Hara, as applied to claim 1 above, and further in view of Gao (U.S. P.G. Publication No. 2014/0352478 A1; “Gao”).
Regarding claim 8, Miki does not expressly disclose a second electrical switch in communication with the controller to change one or more of non-shifting operations of the controller and non-shifting operations of the electromechanical gear shifting device.
Gao teaches a second electrical switch (38a) in communication with a controller (62a) to change one or more of non-shifting operations of the controller and non-shifting operations of the electromechanical gear shifting device (¶ [0051]) for the purpose of providing an add-on component that provides more functionality to the device (¶ [0050]).
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Miki as modified above to incorporate a second electrical switch in communication with the controller to change one or more of non-shifting operations of the controller and non-shifting operations of the electromechanical gear shifting device, as taught by Gao, for the purpose of providing an add-on component that provides more functionality to the device. In addition, the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified that combining known elements according to known methods to yield predictable results is a rationale that supports a conclusion of obviousness. See MPEP § 2143. In this case, one of ordinary skill in the art at the time of the invention would recognize that Miki, Hara, and Gao are drawn to analogous/similar structures i.e. electronic bicycle control devices mounted on brifters, and would therefore recognize that modifying Miki in view of Hara in further view of the teachings of Gao described supra would, with reasonable predictability, result in an additional non-shifting switch being mounted onto the first operating member that is also connected to the same controller and power supply as the shifting switches. For example, see the manner in which switch units at 20, 21 are connected to controller 25 and power supply 34 in Figure 3 of Hara.
Regarding claim 9, Miki as modified above does not expressly disclose the second electrical switch being smaller than the electrical switch. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the second electrical switch being smaller than the electrical switch as a matter of design choice because it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)( the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04 (IV)(A). Here, nowhere in the original disclosure does it disclose or suggest that the device e.g. the claimed second electrical switch, by virtue of being smaller than the “electric switch,” would perform its non-shifting function any differently than that of the Gao device. As such, the aforementioned claim limitation does not amount to a patentable difference.
Miki as modified above further discloses the following:
Regarding claim 10:
The bicycle control assembly of claim 9, wherein the second electrical switch and the electrical switch are disposed on the first operating member are attached to a same printed circuit board (25 in Hara, 62a in Gao; the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified that combining known elements according to known methods to yield predictable results is a rationale that supports a conclusion of obviousness. See MPEP § 2143. In this case, one of ordinary skill in the art at the time of the invention would recognize that Hara and Gao are drawn to analogous/similar structures i.e. electronic bicycle control devices mounted on brifters, and would therefore recognize that modifying Miki in view of Hara in further view of the teachings of Gao described supra would, with reasonable predictability, result in an additional non-shifting switch being mounted onto the first operating member that is also connected to the same controller and power supply as the shifting switches. For example, see the manner in which switch units at 20, 21 are connected to controller 25 and power supply 34 in Figure 3 of Hara).
Regarding claim 11:
The bicycle control assembly of claim 10, wherein the PCB is disposed in a chamber disposed proximate to a distal end of the first operating member (see PCB 62a being disposed further from housing 30a in Fig. 4 of Gao).
Regarding claim 12:
The bicycle control assembly of claim 11, wherein the non-shifting operations include one or more of pairing operations of the control assembly to the electromechanical gear shifting device and trim operations of the electromechanical gear shifting device (¶ [0051] in Gao, “pressing the add-on component 38a for less than a predetermined time during the adjustment mode can allow modification of an adjustment amount from the standard position of the chain guide for each gear”).
Regarding claim 13, Miki as modified above does not expressly disclose the electronic componentry further comprises an LED configured to emit light to convey a status of the electronic componentry.
Gao teaches electronic componentry further comprising an LED (40a) configured to emit light to convey a status of the electronic componentry (¶ [0023]) for the purpose serving as a notification unit ¶ [0052]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Miki, with a reasonable expectation of success, such that electronic componentry further comprises an LED configured to emit light to convey a status of the electronic componentry, as taught by Gao, for the purpose of serving as a notification unit.
Regarding claim 14:
A bicycle control assembly (depicted in FIG. 2, 4) for operating an electromechanical gear shifting device (¶ 13), comprising:
a housing (60; FIG. 4) mountable to the bicycle (depicted in FIG. 1-2);
a controller (158) located within the housing (depicted in at least FIG. 17);
an operating member (264; FIG. 24) movably connected to the housing (depicted in FIG. 24); and
electronic componentry disposed on the operating member (¶ 89, “conventional electric shifting mechanism”),
the electronic componentry including an electrical switch in communication with the controller (switches SW1, SW2 of Hara located on the operating member as shown in FIG. 2 in Hara and at the distal end of wire harness 280 in FIG. 24 of Miki; ¶ 94),
an antenna in communication with the controller (via wire 266 as seen in FIG. 24) and configured to send a signal (¶ 94),
wherein the controller is configured to generate a signal to be wirelessly transmitted by the wireless communication module to change a shift position of the electromechanical gear shifting device responsive to an input from the electrical switch (¶ 96, “The removable radio communication unit 70 includes all of the functionality and structure described above in the first embodiment but additionally is configured to process signals produced by shifting movements of the brake lever 122 and shifter lever 124 abouttheAxisA2 andA3 . The removable radio communication unit 70 is further configured to broadcast corresponding radio signals via the antenna 68 to the controller/display unit 246, which in turn takes appropriate positioning control of the electrically powered front derailleur and the electrically powered rear derailleur.”).
Regarding claims 14, 16, and 17, Miki does not expressly disclose that the antenna is on the operating member, specifically the distal portion of the operating member, wherein the distal portion includes an internal compartment and the antenna is housed within the internal compartment.
Gao teaches that an antenna (42a; ¶¶ 43, 53; wireless communication unit 42a inherently contains an antenna element that facilitates wireless communication; if unit 42a did not contain an antenna element, it could not operate wirelessly as intended and described therein) is on an operating member (depicted in FIG. 4), the antenna element is on a distal portion of an operating member (depicted in FIG. 4 at the lower side/portion i.e. distal portion of the operating member 32a), wherein the distal portion includes an internal compartment (depicted in FIG. 4 within walls defined e.g. at 72a) and the antenna is housed within the internal compartment (depicted in FIG. 4) for the purpose of space/size optimization (¶¶ 31, 56).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Miki, with a reasonable expectation of success, such that the antenna is on the operating member, specifically the distal portion of the operating member, wherein the distal portion includes an internal compartment and the antenna is housed within the internal compartment for the purpose of space/size optimization, as taught by Gao, for the purpose of space/size optimization.
Miki as modified above further teaches the following:
Regarding claim 15:
The bicycle control assembly of claim 14, wherein the operating member includes a distal portion (lower end at 264 in FIG. 24; lower end near the switches SW1, SW2 in FIG. 2 in Hara) and a proximal portion (upper portion as seen in FIG. 24; upper portion as seen in FIG. 2), the proximal portion movably supported by the housing, and the electrical switch located at the distal portion of the operating member (depicted in FIG. 2 in Hara).
Regarding claim 18:
The bicycle control assembly of claim 14, further comprising a power supply (166) located in the housing (depicted in FIG. 16); and a cable (280 in FIG. 4; FIG. 2 in Hara depicts a cable connecting the switches SW1 and SW2) extending from the housing to the operating member connecting the power supply and the electronic componentry (depicted in at least FIG. 24).
Regarding claim 19:
The bicycle control assembly of claim 14, further comprising: a communication module (70) located in the housing and connected to the controller and the antenna (depicted in FIG. 17, 24).
Response to Arguments
Applicant's arguments filed 8/3/2026 have been fully considered but they are not persuasive.
Applicant argues that the cited art combination does not teach that the operating member is a shift operating member. Remarks at 8-9. In response, the Examiner respectfully disagrees. Miki teaches an operating member (264; FIG. 24) that is a shifting operating member (¶ 89,”a brake lever assembly 264 that includes a conventional electric shifting mechanism”). Hara teaches that its switches SW1 and SW2 are actuated via shift operating members (¶ 31, “shift operating members 44 and 45 are pushed toward a center plane of the bicycle to depress electrical switches SWl and SW2, respectively”). As such, Applicant’s argument is not deemed as persuasive.
Applicant argues that Gao does not teach an antenna located on an operating member being in communication with a controller located within the housing. Remarks at 11. In response, 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, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, Miki teaches a controller (158; FIG. 17) located within the housing (FIG. 17 depicts controller 158 disposed inside of the housing 60). Gao teaches that an antenna (42a; ¶¶ 43, 53; wireless communication unit 42a inherently contains an antenna element that facilitates wireless communication; if unit 42a did not contain an antenna element, it could not operate wirelessly as intended and described therein) is on an operating member (depicted in FIG. 4), the antenna element is on a distal portion of an operating member (depicted in FIG. 4 at the lower side/portion i.e. distal portion of the operating member 32a), wherein the distal portion includes an internal compartment (depicted in FIG. 4 within walls defined e.g. at 72a) and the antenna is housed within the internal compartment (depicted in FIG. 4) for the purpose of space/size optimization (¶¶ 31, 56). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Miki, with a reasonable expectation of success, such that the antenna is on the operating member, specifically the distal portion of the operating member, wherein the distal portion includes an internal compartment and the antenna is housed within the internal compartment for the purpose of space/size optimization, as taught by Gao, for the purpose of space/size optimization.
Applicant argues that that a POSITA would have no reason to relocate the antenna from Miki’s existing arrangement and that rather that it would add more complexity, rather than optimize space, by requiring e.g. increased cable routing through a moving a link. Remarks at 11-12. In response, "[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 80 USPQ2d 1641, 1651 (Fed. Cir. 2006); see MPEP § 2143(I)(G). Here, one having ordinary skill in the art would be capable of potentially reducing the size of the housing be relocating the antenna from within the housing to within the operating member. In addition, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another." Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Here, the benefit of reducing the number of components disposed within the housing by e.g. locating the antenna to be disposed within the operating remember rather than within the housing would not necessarily be outweighed by requiring a more complex design. Moreover, Gao’s antenna would not necessarily require increased cable routing as it is able to communicate wirelessly with its controller (¶ 44, “a cycle computer 70 is one example of an electrical component that would be capable of communicating wirelessly with the wireless communication unit 42a.”). As such, Applicant’s argument is not deemed as persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL D YABUT whose telephone number is (571)270-5526. The examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor John Olszewski can be reached on (571) 272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL D YABUT/Primary Examiner, Art Unit 3656
