Ex Parte Bauer

Board of Patent Appeals and Interferences

Jan 14, 2009

10767745 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte CHRISTIAN BAUER 8
____________________ 9
10
Appeal 2008-4674 11
Application 10/767,745 12
Technology Center 3600 13
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15
Decided: January 14, 2009 16
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18
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE 27
Appellant appeals under 35 U.S.C. § 134 (2002) from a Final Office 28
Action of claims 1 and 12-32. We have jurisdiction under 35 U.S.C. § 6(b) 29
(2002). 30
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SUMMARY OF DECISION 1
We AFFIRM-IN-PART. 2
THE INVENTION 3
The Appellant’s claimed invention is directed to a plastic retaining 4
member for holding tubular lines on a support and isolating pressure pulses 5
in the lines from the support (Spec. 1, ll. 2-11). Claim 1, reproduced below, 6
is representative of the subject matter on appeal. 7
1. A retaining member for holding and supporting an 8
elongated element from a support, said retaining member 9
comprising: 10
a base portion attachable to the support; and 11
a holding portion connected to said base portion and 12
comprising a recess for holding the elongated element therein, 13
said recess comprising: 14
a tubular portion; and 15
a plurality of spaced ribs extending radially inwardly 16
from said tubular portion to have different radial heights. 17
18
THE REJECTIONS 19
The Examiner relies upon the following as evidence of 20
unpatentability: 21
Kropp US 3,126,184 Mar. 24, 1964 22
Byerly US 4,441,677 Apr. 10, 1984 23
Ruckwardt US 5,464,179 Nov. 7, 1995 24
25
The following rejections are before us for review: 26
1. Claims 1, 12-27 and 29-32 are rejected under 35 U.S.C. § 103(a) 27
(2004) as being unpatentable over Ruckwardt in view of Byerly. 28
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2. Claim 28 is rejected under 35 U.S.C. § 103(a) (2004) as being 1
unpatentable over Ruckwardt in view of Byerly, and further in view of 2
Kropp. 3
4
ISSUES 5
The issues before us are whether the Appellant has shown that the 6
Examiner erred in rejecting claims 1, 12-27 and 29-32 over Ruckwardt in 7
view of Byerly, and claim 28 over Ruckwardt in view of Byerly, and further 8
in view of Kropp. These issues turn on whether: (1) the Examiner has failed 9
to articulate a reason with rational underpinning to combine the teachings of 10
Ruckwardt in view of Byerly, and further in view of Kropp; (2) the 11
teachings of Ruckwardt, Byerly and Kropp disclose the claimed ribs; and (3) 12
Ruckwardt discloses a further holding portion as called for in claim 29 and a 13
resilient contact element as called for in claims 30 and 32. 14
15
FINDINGS OF FACT 16
We find that the following enumerated findings are supported by at 17
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 18
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 19
proceedings before the Office). 20
1. The Appellant’s Specification discloses a retaining member 1 for 21
holding and supporting an elongated element from a support 45, 22
wherein the retaining member 1 comprises a base portion 2 23
attachable to the support 45 and a holding portion 3 connected to 24
the base 2 portion, the holding portion comprises a recess 23-26 for 25
holding the elongated element therein, and wherein the recess 23-26
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26 comprises a tubular portion 29-31 and a plurality of spaced ribs 1
32-34 which extend radially inwardly from the tubular portion 29-2
31 to have different radial heights (fig. 3). 3
2. The Appellant’s Specification further discloses that the base 4
portion 2 is made of a harder plastic material, and the ribs 32-34 5
and the tubular portion 29-31 are made of a softer plastic material 6
(Spec. 3, ll. 15-23 and Spec. 6, ll. 14-18). 7
3. The Appellant’s Specification still further discloses that the ribs 8
32-34 include first ribs 32’, 33’ having a greater radial height than 9
the second ribs 32”, 33”; the first and second ribs 32-34 having 10
widths at the top, wherein the width of the first rib (b in fig. 3) 11
being smaller than the width of the second rib (d in fig. 3) (Spec. 6, 12
ll. 22-27); the first and second ribs being alternatingly arranged in 13
an axial direction of said tubular portion 29-31; and the first and 14
second ribs including a top, wherein the top of the first rib 15
describes a convex curve and the top of the second ribs describe 16
concave curves (fig. 3); 17
4. The Appellant’s Specification still further discloses a resilient 18
contact element 36, 37 on the holding portion 3 adapted to bear 19
against a surface of the support 45 when the base position 2 is 20
attached to the support (Spec. 7, ll. 22-24), and the resilient contact 21
element being made from the same softer plastic material as the 22
first and second ribs 32-34 (Spec. 7, ll. 9-15). 23
5. The Appellant’s Specification still further discloses a further 24
holding portion connected to said base portion 2, the further 25
holding portion comprises a further recess 26 for holding another 26
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elongated element therein, the further recess 26 having a smooth 1
inner surface free of ribs or teeth, wherein the holding portions are 2
positioned on opposite sides of said base portion (Spec. 6, l. 28 and 3
Spec. 8, ll. 3-5). 4
6. Ruckwardt discloses a retaining member 1 for holding and 5
supporting an elongated element (a tube-shaped part) (col. 1, l. 38 6
and col. 4, ll. 5-23) from a support; wherein the retaining member 7
1 comprises a base portion 2 attachable to the support and a 8
holding portion 3 connected to the base 2 portion; the holding 9
portion comprises a recess 17 for holding the elongated element 10
therein; and wherein the recess 17 comprises a tubular portion 16 11
and a plurality of spaced ribs 18, 19 which extend radially 12
inwardly from the tubular portion 16. 13
7. Ruckwardt further discloses that the base portion 2 is made of a 14
harder plastic material, and the ribs 18-19 and the tubular portion 15
16 are made of a softer plastic material (col. 2, ll. 59-62). 16
8. Byerly discloses first ribs (protuberances) 32 having a greater 17
radial height than second ribs (protuberances) 34, wherein the first 18
ribs 32 and second ribs 34 are alternatingly arranged in a 19
circumferential direction (figs. 4 and 6) to accommodate different 20
diameter wiring conduit (col. 3, ll. 19-35 and 59-62). 21
9. Kropp discloses three ribs 56; two of the ribs have a curved 22
(concave shaped) recess 57, 58; and the third rib has a v-shaped 23
(convex shaped) projection 59; wherein the ribs engage the outer 24
periphery of a conduit (col. 4, ll. 18-25). 25
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10. The ordinary meaning of the word “rib” includes “an elongated 1
ridge.” Merriam-Webster’s Collegiate Dictionary (10th ed. 1996). 2
PRINCIPLES OF LAW 3
Appellant has the burden on appeal to the Board to demonstrate error 4
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 5
2006) (“On appeal to the Board, an applicant can overcome a rejection 6
[under § 103] by showing insufficient evidence of prima facie obviousness 7
or by rebutting the prima facie case with evidence of secondary indicia of 8
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 9
1998)). 10
“Section 103 forbids issuance of a patent when ‘the differences 11
between the subject matter sought to be patented and the prior art are such 12
that the subject matter as a whole would have been obvious at the time the 13
invention was made to a person having ordinary skill in the art to which said 14
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 15
1734 (2007). The question of obviousness is resolved on the basis of 16
underlying factual determinations including (1) the scope and content of the 17
prior art, (2) any differences between the claimed subject matter and the 18
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 19
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 20
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these 21
questions might be reordered in any particular case, the [Graham] factors 22
continue to define the inquiry that controls.”) 23
In KSR, the Supreme Court emphasized “the need for caution in 24
granting a patent based on the combination of elements found in the prior 25
art,” id. at 1739, and discussed circumstances in which a patent might be 26
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determined to be obvious. In particular, the Supreme Court emphasized that 1
“the principles laid down in Graham reaffirmed the ‘functional approach’ of 2
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham, 383 U.S. 3
at 12), and reaffirmed principles based on its precedent that “[t]he 4
combination of familiar elements according to known methods is likely to be 5
obvious when it does no more than yield predictable results.” Id. The Court 6
explained: 7
When a work is available in one field of endeavor, 8
design incentives and other market forces can 9
prompt variations of it, either in the same field or a 10
different one. If a person of ordinary skill can 11
implement a predictable variation, § 103 likely 12
bars its patentability. For the same reason, if a 13
technique has been used to improve one device, 14
and a person of ordinary skill in the art would 15
recognize that it would improve similar devices in 16
the same way, using the technique is obvious 17
unless its actual application is beyond his or her 18
skill. 19
Id. at 1740. The operative question in this “functional approach” is thus 20
“whether the improvement is more than the predictable use of prior art 21
elements according to their established functions.” Id. 22
The Supreme Court stated that there are “[t]hree cases decided after 23
Graham [that] illustrate the application of this doctrine.” Id. at 1739. “In 24
United States v. Adams, … [t]he Court recognized that when a patent claims 25
a structure already known in the prior art that is altered by the mere 26
substitution of one element for another known in the field, the combination 27
must do more than yield a predictable result.” Id. at 1739-40. “Sakraida 28
and Anderson’s-Black Rock are illustrative – a court must ask whether the 29
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improvement is more than the predictable use of prior art elements according 1
to their established function.” Id. at 1740. 2
The Supreme Court stated that “[f]ollowing these principles may be 3
more difficult in other cases than it is here because the claimed subject 4
matter may involve more than the simple substitution of one known element 5
for another or the mere application of a known technique to a piece of prior 6
art ready for the improvement.” Id. The Court explained: 7
Often, it will be necessary for a court to look to 8
interrelated teachings of multiple patents; the 9
effects of demands known to the design 10
community or present in the marketplace; and the 11
background knowledge possessed by a person 12
having ordinary skill in the art, all in order to 13
determine whether there was an apparent reason to 14
combine the known elements in the fashion 15
claimed by the patent at issue. 16
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis 17
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. 18
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by 19
mere conclusory statements; instead, there must be some articulated 20
reasoning with some rational underpinning to support the legal conclusion of 21
obviousness”)). However, “the analysis need not seek out precise teachings 22
directed to the specific subject matter of the challenged claim, for a court 23
can take account of the inferences and creative steps that a person of 24
ordinary skill in the art would employ.” Id. 25
The Federal Circuit recently concluded that it would have been 26
obvious to combine (1) a mechanical device for actuating a phonograph to 27
play back sounds associated with a letter in a word on a puzzle piece with 28
(2) an electronic, processor-driven device capable of playing the sound 29
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associated with a first letter of a word in a book. Leapfrog Ent., Inc. v. 1
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“[a]ccommodating 2
a prior art mechanical device that accomplishes [a desired] goal to modern 3
electronics would have been reasonably obvious to one of ordinary skill in 4
designing children’s learning devices”). In reaching that conclusion, the 5
Federal Circuit recognized that “[a]n obviousness determination is not the 6
result of a rigid formula disassociated from the consideration of the facts of a 7
case. Indeed, the common sense of those skilled in the art demonstrates why 8
some combinations would have been obvious where others would not.” Id. 9
at 1161 (citing KSR, 127 S. Ct. 1727, 1739 (“The combination of familiar 10
elements according to known methods is likely to be obvious when it does 11
no more than yield predictable results.”)). The Federal Circuit relied in part 12
on the fact that Leapfrog had presented no evidence that the inclusion of a 13
reader in the combined device was “uniquely challenging or difficult for one 14
of ordinary skill in the art” or “represented an unobvious step over the prior 15
art.” Id. at 1162 (citing KSR, 127 S. Ct. at 1740-41). 16
When construing claim terminology in the United States Patent and 17
Trademark Office, claims are to be given their broadest reasonable 18
interpretation consistent with the specification, reading claim language in 19
light of the specification as it would be interpreted by one of ordinary skill in 20
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 21
2004). 22
23
ANALYSIS 24
Ruckwardt discloses a retaining member 1 for holding and supporting 25
an elongated element (a tube-shaped part) (col. 1, l. 38 and col. 4, ll. 5-23) 26
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from a support; wherein the retaining member 1 comprises a base portion 2 1
attachable to the support and a holding portion 3 connected to the base 2
portion 2; the holding portion comprises a recess 17 for holding the 3
elongated element therein; wherein the recess 17 comprises a tubular portion 4
16 and a plurality of spaced ribs 18, 19 that extend radially inwardly from 5
the tubular portion 16 (Fact 6). The base portion 2 is made of a harder 6
plastic material; and the ribs 18-19 and the tubular portion 16 are made of a 7
softer plastic material (col. 2, ll. 59-62) (Fact 7). Ruckwardt differs from the 8
claimed subject matter in that it does not disclose the particular shape of the 9
ribs, the number of ribs and the particular arrangement of the ribs. Byerly 10
discloses first ribs 32 having a greater radial height than second ribs 34 to 11
accommodate different diameter wiring conduit (col. 3, ll. 19-23 and 59-62), 12
wherein the first ribs 32 and second ribs 34 are alternating arranged in a 13
circumferential direction (figs. 4 and 6) (Fact 8). Kropp discloses three ribs 14
56; two of the ribs have a curved (concave shaped) recess 57, 58; and the 15
third rib has a v-shaped (convex shaped) projection 59; wherein the ribs 16
engage the outer periphery of a conduit (col. 4, ll. 18-25) (Fact 9). We 17
conclude that to combine the teachings of Ruckwardt and Byerly (claims 1, 18
12-27 and 31), and in addition Kropp (claim 28), as set forth by the 19
Examiner (Ans. 3-5), would have been obvious at the time the invention was 20
made to a person having ordinary skill in the art. 21
Appellant argues that there is no motivation to combine Ruckwardt 22
and Byerly, as Byerly’s arrangement is intended to be wrapped around a 23
corrugated tube with two distinct diameters, while Ruckwardt’s arrangement 24
is directed to supporting a single tube-shaped part which is pressed into 25
place (Br. 5-6). We agree with the Examiner’s analysis (Ans. 5-6) and find 26
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since both Ruckwardt and Byerly teach holding a tube in a retaining 1
member, the Examiner has articulated a reason with rational underpinning to 2
combine the teachings of Ruckwardt and Byerly. 3
Appellant further argues that there is no disclosure in either 4
Ruckwardt or Byerly to suggest to a person having ordinary skill in the art 5
that the teachings of Byerly could be transferred to Ruckwardt (Br. 7). In 6
particular, Appellant argues that it is hardly likely that a person having 7
ordinary skill in the art would consider increasing the number of projections 8
in Ruckwardt and arranging the projections in a pattern as called for in the 9
claims (Br. 7). Both Ruckwardt and Byerly teach using projections to 10
support a tube in a retaining member. Byerly discloses that the different 11
height ribs alternating arranged in a circumferential direction accommodate 12
different diameter wiring conduit (Fact 8). Therefore, a person having 13
ordinary skill in the art desiring to accommodate different diameter tubing in 14
Ruckwardt would look to the teachings of Byerly. In KSR the Supreme 15
Court held that if a technique has been used to improve one device and a 16
person of ordinary skill in the art would recognize that it would predictably 17
improve similar devices in the same way, using the technique is obvious. 18
See KSR at 1740. 19
Appellant still further argues that since Ruckwardt has gone to the 20
trouble of disclosing elements 18 as not being ribs, it is improper to treat 21
them as being ribs (Br. 9-10). The ordinary meaning of the word “rib” 22
includes “an elongated ridge.” Merriam-Webster’s Collegiate Dictionary 23
(10th ed. 1996) (Fact 10). While elements 18 in Ruckwardt are denoted as 24
being a thickening or tab portion, they are also shown in figure 3 as 25
elongated ridges. Therefore, we find that the elements 18 in Ruckwardt are 26
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considered ribs regardless of the identifier that Ruckwardt uses to denote the 1
elements 18. See In re Am. Acad. of Sci. Tech. Ctr. at 1364. 2
Appellant still further argues that the Examiner misinterpreted 3
Kropp’s invention as disclosing ribs 56, 57 with convex and concave curves, 4
as ribs 56, 57 are parts of a circular recess. Kropp refers in column 3, ll. 18-5
23 to three ribs 56, not a curved recess. Further, in Kropp, figure 8 shows 6
three elements labeled as 56. In Kropp, two of the ribs have a curved 7
(concave shaped) recess 57, 58; and the third rib has a v-shaped (convex 8
shaped) projection 59, wherein the ribs engage the outer periphery of a 9
conduit (Fact 9). Accordingly, we agree with the Examiner’s analysis (Ans. 10
5) and find that Kropp discloses ribs having convex and concave curves. 11
Appellant still further argues that the prior art does not disclose the 12
limitations of claim 29 (a further holding portion comprising a further 13
recess, wherein the further recess has a smooth inner surface free of ribs or 14
teeth), claim 30 (a resilient contact element adapted to bear against a surface 15
of the support, wherein the resilient contact element being made of the same 16
plastic material as the first and second ribs), and claim 32 (a resilient contact 17
element that bears against the support and spaces the base portion from the 18
support, wherein the resilient contact element being made of softer plastic 19
material) (Br. 14-15). We agree with Appellant that the disclosures of 20
Ruckwardt, Byerly and Kropp do not show a further holding portion 21
comprising a further recess, wherein the further recess has a smooth inner 22
surface free of ribs or teeth as called for in claim 29; a resilient contact 23
element adapted to bear against a surface of the support, wherein the 24
resilient contact element being made of the same plastic material as the first 25
and second ribs as called for in claim 30; and a resilient contact element that 26
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bears against the support and spaces the base portion from the support, 1
wherein the resilient contact element being made of softer plastic material as 2
called for in claim 32. We find that the Examiner has not expressly 3
discussed the argued limitations of claim 29. Regarding claims 30 and 32, 4
we do not agree with the Examiner’s analysis (Ans. 5) that in Ruckwardt, 5
element 20 is a resilient contact element as Ruckwardt discloses that element 6
20 is an aperture in element 2, wherein element 2 is formed of hard plastic 7
(col. 2, l. 59-60 and col. 4, ll. 25-26). Further, even if we considered the top 8
edge of aperture 20 in Ruckwardt to be a contact element, we would still not 9
agree with the Examiner’s analysis (Ans. 5) that it would have been obvious 10
to make the contact element (top edge of 20) out of the same plastic (softer 11
plastic) as the first and second ribs since the top edge is part of a one piece 12
hard plastic first component (col. 2, ll. 59-60). Accordingly, we conclude 13
that the Examiner erred in rejecting claims 29, 30 and 32 over Ruckwardt in 14
view of Byerly. 15
16
CONCLUSION OF LAW 17
We conclude that the Appellant has not shown that the Examiner 18
erred in rejecting claims 1, 12-27 and 31 under 35 U.S.C. § 103(a) as being 19
unpatentable over Ruckwardt in view of Byerly; and claim 28 under 35 20
U.S.C. § 103(a) as being unpatentable over Ruckwardt in view of Byerly, as 21
the Examiner has articulated a reason with rational underpinning to combine 22
the teachings of Ruckwardt in view of Byerly and further in view of Kropp, 23
and Ruckwardt discloses a plurality of ribs as called for in claims 1 and 30. 24
We conclude that the Appellant has shown that the Examiner erred in 25
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rejecting claims 29, 30 and 32 under 35 U.S.C. § 103(a) as being 1
unpatentable over Ruckwardt in view of Byerly. 2
3
DECISION 4
The decision of the Examiner to reject claims 1, 12-27 and 31 over 5
Ruckwardt in view of Byerly, and claim 28 over Ruckwardt in view of 6
Byerly, and further in view of Kropp is affirmed. The decision of the 7
Examiner to reject claims 29, 30 and 32 under 35 U.S.C. § 103(a) as being 8
unpatentable over Ruckwardt in view of Byerly is reversed. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2008). 11
12
AFFIRMED-IN-PART 13
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hh 19
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