Ex Parte CampbellDownload PDFBoard of Patent Appeals and InterferencesAug 25, 200910703948 (B.P.A.I. Aug. 25, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RICHARD VEST CAMPBELL ____________ Appeal 2008-001335 Application 10/703,948 Technology Center 1700 ____________ Decided: August 25, 2009 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-10. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2008-001335 Application 10/703,948 2 Appellant’s claimed invention is directed to a method of fixing an anchor to a cable and an article of manufacture prepared by such a method. Claim 1 is illustrative and reproduced below: 1. A method for affixing an anchor to a cable using a liquid potting compound containing solid particles, so that a heterogeneous dispersion of said solid particles within said potting compound results, comprising: a. providing an anchor, including: i. a first end; ii. a second end; iii. an expanding passage extending from said first end to said second end., wherein said expanding passage is larger proximate said second end than said first end; b. placing said anchor on said cable so that said first end of said anchor faces away from said end of said cable, and said second end of said anchor faces toward said end of said cable, while being distal to said end of said cable; c. providing a liquid potting compound containing solid particles; d. splaying a length of strands proximate said end of said cable; e. infusing said length of strands with said potting compound; and f. moving said anchor along said cable toward said end of said cable, so that said expanding passage squeezes said splayed length of strands together, thereby forcing said liquid potting compounds toward said second end of said expanding passage while trapping said solid particles within said strands and producing said heterogeneous dispersion of said solid particles within said anchor wherein a higher concentration of said solid particles aggregate proximate said first end than said second end. Appeal 2008-001335 Application 10/703,948 3 The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Scott 3,226,805 Jan. 4, 1966 Schimmeyer 3,570,074 Mar. 16, 1971 Davis 3,660,887 May 9, 1972 Tsunoda JP 12234284 Aug. 29, 2000 Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schimmeyer in view of Davis, Tsunoda, and Scott.1 We affirm the stated rejection for substantially the reasons set forth in the Examiner’s Answer. Appellant presents arguments focused on process claim 1 and relies on those arguments for product-by-process claim 6, without presenting any additional arguments for explaining why the product of claim 6 would have been non-obvious to one of ordinary skill in the art given the combined teachings of the applied references. We shall primarily focus on claim 1, as a representative claim, in deciding this appeal. 1 The Examiner presents an obviousness rejection of claims 1 and 6 in the Examiner’s Answer (Ans. 4 and 5). The Examiner’s rejection of claims 2 and 7-10 on the same grounds as claims 1 and 6 and the Examiner’s obviousness rejection of claims 3-5 over the above-identified references further in view of Monte (U.S. Pat. No. 4,102,862), as were set forth in the Final Office action (FAO), are not maintained by the Examiner in the Examiner’s Answer (see generally Ans.). Where a ground of rejection does not appear in the Examiner's Answer, the rejection is generally assumed to have been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957). Accordingly, the obviousness rejection of claims 1 and 6 is the only rejection that is before us for consideration. Appeal 2008-001335 Application 10/703,948 4 PRINCIPAL ISSUE Has Appellant shown reversible error in the Examiner’s determination that the combined teachings of the applied prior art would have rendered obvious, to one of ordinary skill in the art, a method of affixing to a cable, an anchor having two ends and an expanding passage extending there between using a potting compound/material and relative anchor/cable movement, as taught/suggested by Schimmeyer, wherein a known liquid potting material compound containing solid particles is used as the potting material, as is called for in claim 1? PRINCIPLES OF LAW On appeal to this Board, Appellant must show that the Examiner erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii). A claimed invention is not patentable if the subject matter of the claimed invention would have been obvious to a person having ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). The Supreme Court has instructed that although the teaching, suggestion, and motivation test “captured a helpful insight,” an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 418. Appeal 2008-001335 Application 10/703,948 5 “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. The Federal Circuit recently emphasized that “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). A rejection premised upon a proper combination of references cannot be overcome by attacking the references individually. In re Keller, 642 F.2d 413, 425-26 (CCPA 1981). FINDINGS OF FACT As found by the Examiner, Schimmeyer teaches a method of affixing a sleeve member (anchor) to a rope (cable) including the steps of: providing a sleeve member or anchor 14 having an expanding passage (bore), placing said sleeve on a rope or cable 12, splaying a length of strands, infusing said length of strands with a potting resin or liquid potting compound (via dipping), and positioning said sleeve over said length of strands (Column 2, Line 63 - Column 3, Line 10). Ans. 4. Appellant does not specifically dispute the aforementioned findings of the Examiner (see generally App. Br.). Appeal 2008-001335 Application 10/703,948 6 In this regard, we further note that Schimmeyer discloses that “[the potting resin is preferably epoxy, but other potting resins, such as polyester, acrylic, and polyurethane may be employed, since these resins cure at normal air temperatures” (col. 3, ll. 21-24). Also, Schimmeyer discloses that the potting resin infused rope strands are pulled downward into receiving engagement with a bore (passage) 22 of the sleeve member (anchor) 14 before the resin is cured to secure the anchor to the rope/cable. The Examiner correctly acknowledges that “Schimmeyer fails to expressly suggest the inclusion of particulate matter in the resin . . . ” (Ans. 4). However, the Examiner finds, and Appellant does not dispute, that: it is extremely well known to include such particles in potting resins, as shown for example by Davis (Column 4, Lines 45-50) and Tsunoda (Abstract). In particular, Davis teaches the benefits of improved compressive strength and Tsunoda teaches improved processing and efficiency while maintaining high strength. (Id.; see generally App. Br.). In this regard, Appellant acknowledges that Davis teaches a potting resin including filler comprising aluminum powder, glass micro spheres, or ground silica therein (App Br. 8; Davis, col. 4, ll. 41-48). Moreover, Appellant recognizes that Tsunoda teaches a resin comprising a thermosetting polymer and silica sand (Id.; Tsunoda, pp. 3, 4, 9, 10, 12). Furthermore, the Examiner has found, without dispute, that if a potting resin with solid particles were selected as the potting material resin for use in the process of Schimmeyer, a “heterogeneous dispersion” of the Appeal 2008-001335 Application 10/703,948 7 particles “would necessarily result” because “formation of a heterogeneous distribution is directly related to moving the anchor relative to the rope (as opposed to a method devoid of relative displacement or movement) and such a method is expressly disclosed by Schimmeyer.” (Ans. 5; see generally App. Br.). The Examiner found that Scott teaches “affixing a fitting to a cable, wherein said fitting is pushed along the length of the cable from an interior position of the cable to an end of the cable” (Ans. 4). Appellant acknowledges that Scott teaches: adding aluminum oxide “grits” to the resin so that “. . . when tension is applied during the seating of the end of the rod, [the grits] tend to bite into both the ro[d] and the fitting” Scott at Column 4, Lines 66-72. (App Br. 8). ANALYSIS Appellant argues that Schimmeyer does not disclose using a particle- containing potting material and the secondary references relied upon by the Examiner to teach potting resin material that includes solid particles do not teach applying the potting resin in a manner that results in a heterogeneous distribution of the solid particles as required by the appealed claims (App. Br. 8-9). However, this argument is unpersuasive as being directed to the teachings of each of the references relied upon by the Examiner, as if they were applied singly rather than in combination. Such argument is not persuasive of showing error in the Examiner’s rejection because it doe not confront the thrust of the Examiner’s obviousness position; which is that it would have been obvious for one of ordinary skill in the art to employ Appeal 2008-001335 Application 10/703,948 8 known solid particle-containing resins as the potting material in Schimmeyer to obtain the expect benefits of using such known potting materials as taught by Davis and Tsunoda, as discussed above and in the Examiner’s Answer. Moreover, as for Appellant’s contentions about the lack of a suggestion for seeking a heterogeneous distribution of the solids, we note that the Examiner’s obviousness position is not premised on such. Rather, the Examiner’s rejection is premised on the reasonable expectation that such a heterogeneous distribution of solid particles would be expected to result upon choosing to employ known solid particle-containing potting material in the method of Schimmeyer wherein relative movement of a potted rope (cable) and sleeve member (anchor) is used. The Examiner determined that one of ordinary skill in the art would have been led to employ such known solid particle-containing resins as an option in Schimmeyer for purposes of improved strength and processing efficiency, as the Examiner found to be taught by Davis and Tsunoda. As we noted above, the Examiner found that such a heterogeneous distribution would reasonably be expected to necessarily occur upon using such known solid particle-containing resin in the method of Schimmeyer wherein relative movement of the rope (cable) and sleeve member (anchor) occur (Ans. 5). Appellants have not come forward with credible evidence of record that weighs against the Examiner’s finding. In this regard, we agree with the Examiner that the claim 1 limitation of “moving said anchor along said cable toward said end of said cable . . .” only requires relative movement of the cable and anchor; consequently encompassing the rope (cable) pulling movement relative to the sleeve member (anchor) of Schimmeyer. Also, we further agree with the Examiner that one of ordinary Appeal 2008-001335 Application 10/703,948 9 skill in the art would have readily recognized that the requisite relative movement required to place the anchor in the correct location relative to the potted portion of the cable would have suggested moving either the cable and/or the anchor given the teachings of Schimmeyer (Ans. 5). On this record, Appellant has not persuaded us as to why the Examiner’s obviousness rejection of method claim 1 and/or product-by- process claim 6 is in error. Consequently, we sustain the Examiner’s obviousness rejection of claims 1 and 6. CONCLUSION Appellant has not shown reversible error in the Examiner’s determination that the combined teachings of the applied prior art would have rendered obvious, to one of ordinary skill in the art, a method of affixing to a cable, an anchor having two ends and an expanding passage extending there between using a potting compound/material and relative anchor/cable movement, as taught/suggested by Schimmeyer, wherein a known liquid potting material compound containing solid particles is used as the potting material, as is called for in claim 1. Appeal 2008-001335 Application 10/703,948 10 ORDER The Examiner’s decision to reject claims 1 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Schimmeyer in view of Davis, Tsunoda, and Scott 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)(1)(v). AFFIRMED cam PENNING, MOORE, WILKINSON, BELL & DUNBAR, P.A. P. O. BOX 10095 TALLAHASSEE, FL 32302-2095 Copy with citationCopy as parenthetical citation