Ex Parte Campbell

Board of Patent Appeals and Interferences

Aug 25, 2009

10703948 (B.P.A.I. Aug. 25, 2009)

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
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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.

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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.

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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.
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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.
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“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.).
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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
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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
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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
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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.

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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

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