Ex Parte RULAND et al

Patent Trial and Appeal Board

Jul 31, 2018

14548517 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/548,517 11/20/2014
29683 7590 08/02/2018
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
FIRST NAMED INVENTOR
Rodd R. RULAND
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
087A.0144.U2(US) 3166
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
USPTO@HSPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODD R. RULAND and JERRY L. HECKMAN
Appeal 2016-006711
Application 14/548,517
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rodd R. Ruland and Jerry L. Heckman ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from a final rejection of claims 20-22, 24--27, 29--33,
and 35-37. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Hubbell Incorporated is the applicant, as provided in 37 C.F.R. § 1.46, and
is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-006711
Application 14/548,517
THE INVENTION
Appellants' invention is directed to a method of making a device
having an electrical connector clip. Claim 20, reproduced below, is
illustrative:
20. A method comprising:
providing a tube comprised of a metal member;
stamping the metal member to form an electrical connector clip,
wherein the electrical connector clip extends from a side of the
tube, wherein the electrical connector clip is formed as a spring
clip configured to resiliently deflect when an electrical ground
conductor is located between the clip and the side of the tube;
connecting the tube to a base, wherein the base is configured to
support the tube in a substantially vertical orientation when the
base is located on a floor, wherein the tube and base are
configured to support raised floor panels above the floor,
wherein the tube is configured to electrically connect to the
electrical ground conductor at the electrical connector clip to
support the ground conductor above the floor and electrically
connect the tube to the ground conductor.
REJECTIONS
The Examiner rejects:
(i) claims 20-22, 25-28, 30-33, 36, and 37 under 35 U.S.C. § 103(a)
as being unpatentable over O'Loughlin (US 4,976,627; issued Dec. 11,
1990) in view of Vargo (US 4,142,638; issued Mar. 6, 1979); and
(ii) claims 24, 29, and 35 under 35 U.S.C. § 103(a) as being
unpatentable over O 'Loughlin in view of Vargo and further in view of
Jakob-Bamberg (US 2003/0177723; published Sept. 25, 2003).
2
Appeal 2016-006711
Application 14/548,517
ANALYSIS
Rejection (i)- claims 20-22, 25-28, 30-33, 36, and 37 -- 0 'Loughlin/Vargo
Claims 20-22, 27, 28, 32, and 33
The Examiner finds, for independent claim 20, that O'Loughlin
discloses a method including providing post 20 and connecting the post to
base 22, wherein the post and base are configured to support raised floor
panels 16 and the post is configured to electrically connect to ground
conductor 26. Final Act. 2. The Examiner finds that O'Loughlin does not
disclose the post being a tube, nor the tube being stamped to form the
electrical connector clip, and also does not disclose the ground conductor
being directly connected to the clip. Final Act. 2-3. The Examiner first
concludes that it would have been obvious to modify post 20 of O 'Loughlin
to be a tube in order to save material. Final Act. 2. The Examiner also cites
to Vargo as teaching a method of stamping metal post 11 to form tab or clip
13. Final Act. 3. The Examiner further concludes that it would have been
obvious to modify the method of O 'Loughlin to stamp an electrical
connector spring clip out of the tube and directly connect the ground
conductor to the clip, as suggested by the teaching of Vargo, in order to
reduce the number of moving parts in the assembly and make it easier to
assemble the parts. Final Act. 3.
Appellants initially contend that "[ t ]here appears to be no suggestion
to combine features of Vargo with O'Loughlin." Appeal Br. 5. This
statement is not accompanied by any explanation, and Appellants do not
indicate any reason why the rational underpinning set forth in the Final
Action would be insufficient. To the extent that this argument may be
construed as referring to the requirement that an obviousness determination
3
Appeal 2016-006711
Application 14/548,517
identify an explicit reason from the prior art to combine prior art teachings,
applicable precedent explains that "the suggestion test is not a rigid
categorical rule. The motivation need not be found in the references sought
to be combined." DyStar Textilfarben GmbH & Co. Deutsch/and KG v. C.
H Patrick Co., 464 F. 3d 1356, 1366 (2006). In the present matter, the
rejection does articulate a reason to combine the teachings of the prior art,
and Appellants' arguments do not explain why that reason is deficient. The
stand-alone statement alleging that there is no suggestion to combine does
not apprise us of Examiner error.
Appellants further contend that Vargo is not analogous art. Appeal
Br. 5. In addressing the issue of nonanalogous art, Examiner states, "the
stamping out of tubes to form clips is widely and notoriously known in the
art (also consider cited references US Patent No. 1,056,173 fig. 1 and US
Patent No. 846,202 fig. 2)." Ans. 2. Appellants take issue with the
Examiner's citation to additional prior art without indicating a new ground
of rejection, and also argue that the Examiner's statement is an improper
taking of official notice. Reply Br. 2---6. To the extent that any citation to
additional prior art, or the statement that certain subject matter "is widely
and notoriously known," may enhance the propriety of the rejection over
0 'Loughlin in view of Vargo, our analysis herein does not rely on these
statements or positions taken by the Examiner.
Appellants correctly summarize the law that a reference is not
analogous art if it is not in the field of applicant's endeavor and is not
reasonably pertinent to the particular problem with which the inventor was
concerned. Appeal Br. 6. Appellants contend that the particular problem
with which they are concerned is making an electrical ground to a floor
4
Appeal 2016-006711
Application 14/548,517
pedestal faster and less expensive. Appeal Br. 6. This assertion is consistent
with the original specification, which states "[ t ]here is a desire for a faster
and less expensive way to connect a ground conductor to a pedestal of a
raised floor system." Spec. ,r 3. Appellants argue that Vargo is not
reasonably pertinent to this problem because the fastener of Vargo is a
mechanical connector and Vargo has nothing to do with an electrical
connector. Appeal Br. 6. However, possible reasonably pertinent solutions
to Appellants' asserted problem of connecting components quickly and
inexpensively are not limited to electrical connections to floor pedestals
within Appellants' field of endeavor; to so limit the range of analogous art
would effectively render the "reasonably pertinent" prong a nullity. Given
the nature of the problem confronted, one of ordinary skill in the art would
have consulted, as well, areas in the mechanical arts directed to quick and
inexpensive fastener structures. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) ("The problems encountered by the inventors of the '456 patent
were problems that were not unique to portable computers ... given the
nature of the problems confronted by the inventors, one of ordinary skill in
the art 'would have consulted the mechanical arts for housings, hinges,
latches, springs, etc."'). Indeed, Appellants' connector involves mechanical
aspects as well as electrical connection aspects.
Vargo discloses a metal fastening structure on a vertical tube that
facilitates quick assembly and is inexpensive ( column 6, lines 29--32;
column 1, lines 5---6; column 2, lines 8-9). Notwithstanding that Vargo is in
the field of prefabricated shelving, the analogous prior art is not limited to
raised flooring devices, but includes other devices having fastening
structures on vertical posts. See, e.g., Graham v. John Deere Co. of Kansas
5
Appeal 2016-006711
Application 14/548,517
City, 383 U.S. 1, 35 (1966) (rejecting the argument that the cited references
were not "pertinent prior art" and stating that "[ t ]he problems confronting
[ the patentee] and the insecticide industry were not insecticide problems;
they were mechanical closure problems"). Because the clip of Vargo, which
is disclosed as facilitating quick assembly and being inexpensive, is at least
reasonably pertinent to the problem of making a ground connection to a post
faster and less expensive, we do not agree that the obviousness rationale
relies on nonanalogous art.
Appellants further argue that the combination of O 'Loughlin and
Vargo would not render claim 20 obvious. Appeal Br. 7. Appellants
contend that a combination of the features of O 'Loughlin and Vargo would
not result in the structure described in the Final Action, but instead would
involve replacing the clamp of O 'Loughlin and providing instead a clip or
tab on the O 'Loughlin post, to which the remainder of the O 'Loughlin
structure would be connected. This, according to Appellants, would result in
"the electrical conductors 26a, 26b attached to the two conductor receiving
portions 42, 44 of O'Loughlin." Appeal Br. 7. The Examiner's conclusion,
however, is that it would have been obvious to "directly connect the ground
conductor to the clip." Final Act. 3. Appellants' argument thus does not
address the rejection as articulated by the Examiner. Further, there is no
evidence in the record to show that a skilled artisan would view the clip of
Vargo to be unsuitable for a direct connection. Appellants also do not
provide an explanation of why a direct connection is infeasible or otherwise
nonobvious, but instead merely state that, in their view, the combined
teachings of the references would lead to another configuration.
6
Appeal 2016-006711
Application 14/548,517
Appellants further contend that the Examiner has not explained why a
person of ordinary skill in the art would rely on O 'Loughlin solely for the
positioning and/or orientation of the conductor connector piece, whereas, on
the other hand, the person of ordinary skill would have looked to Vargo for
particular structural details of the conductor connector piece. Appeal Br. 7.
However, Appellants do not cite claim language that would require a
particular position or orientation of the conductor connector piece, and do
not cite any portion of the obviousness rationale that relies on O 'Loughlin
regarding a matter of positioning and/or orientation. The finding of
obviousness in the present instance is not an incongruous mixing of the
positioning and/or orientation of one structure which particular structural
details of another, but instead is a simple substitution of fasteners. This
argument therefore does not apprise us of Examiner error.
Appellants next argue that Vargo does not disclose a spring clip in the
claimed configuration. Appeal Br. 8. In attempting to differentiate the clip
recited in the pending claims from that of Vargo, Appellants maintain that
pimple 36 on clip 13 of Vargo faces outwardly. Id. However, claim 20 only
recites that the electrical connector clip is formed as a spring clip configured
to resiliently deflect when an electrical ground conductor is located between
the clip and the side of the tube. Although Appellants state "[ t ]here is no
disclosure or suggestion in Vargo of the tab (13) being a spring clip",
Appellants do acknowledge that the Vargo reference teaches that the clip
bends resiliently. Id. Regardless of which way pimple 36 faces, Appellants'
arguments do not point to any reason why a clip that bends resiliently would
not fall within the scope of the claim language calling for a spring clip.
7
Appeal 2016-006711
Application 14/548,517
Independent claims 21 and 32 include limitations that are similar to
those discussed above regarding claim 20, and are rejected under an
obviousness rationale identical to that asserted against claim 20. Final Act.
4 and 7. Appellants repeat the same arguments for claims 21 and 32 as were
previously presented with respect to claim 20. Appeal Br. 11-12 and 17-18.
For the same reasons, we are not persuaded by such arguments and,
accordingly, we sustain the Examiner's rejection of claims 21 and 32.
No separate arguments for patentability of dependent claims 22, 27,
28, and 33 are advanced by Appellants. Those claims fall with the
independent claim from which they depend.
Claims 25, 26, 30, 31, 36, and 37
Regarding claim 25, Appellants argue that the Examiner has not
established the obviousness of providing a second clip on a second different
side of the tube. Appeal Br. 9. The Examiner's findings merely cite Figure
7 of Vargo as showing a second clip on a second side of the tube, and do not
provide a rationale for modifying O 'Loughlin to reach all such limitations. 2
Finding that each element of the claim is known individually in the prior art
references is not sufficient to establish a prima facie case of obviousness
absent some objective reason to combine the teachings of the references.
The rejection of claim 25 is not sustained.
Appellants also argue that the rejection of claim 26 does not establish
a prima facie case of obviousness. Appeal Br. 11. Claim 26 depends from
2 The initial rejection includes a finding that it would have been obvious to
modify the cylindrical post of O 'Loughlin to be a hollow tube, and this
rejection fails to explain where any "different sides" would be found on a
cylindrical tube.
8
Appeal 2016-006711
Application 14/548,517
claim 25, and the rejection of claim 26 is therefore deficient for at least the
same reasons. Additionally, the rejection of claim 26 is similar to that of
claim 25 in that it merely cites the Vargo reference for additional features
without explaining a reason to combine the teachings of the references. The
rejection of claim 26 is not sustained.
Claims 30 and 31 are similar to claims 25 and 26, except that they
depend from claim 21. Claims 36 and 37 are similar to claims 25 and 26,
except that they depend from claim 32. The rejections of claims 30, 31, 36,
and 37 are thus deficient for the same reasons discussed above with respect
to claims 25 and 26, and these rejections are therefore not sustained.
Rejection (ii) - claims 24, 29, and 35 -- 0 'Loughlin/Vargo/Jakob-Bamberg
Appellants do not present arguments regarding this rejection, and
therefore Appellants are presumed to be relying on the arguments submitted
with respect to claims 20, 21, and 32 in traversing this grounds of rejection.
As noted above, we are not apprised of error in the Examiner's rejection of
claims 20, 21, and 32. As such, the rejection is sustained for the same
reasons appearing above.
DECISION
We affirm the rejections of claims 20-22, 24, 27, 29, 32, 33, and 35.
We reverse the rejection of claims 25, 26, 30, 31, 36, and 37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
9